On the eve of ICANN’s 45th public meeting in Toronto — the last such meeting for the next half year until the April 2013 Beijing event — the United States government has urged ICANN to consider adding new trademark protections at .com and other incumbent gTLDs, and to adopt a Uniform Rapid Suspension (URS) model that includes a default judgment procedure. These proposals could dramatically alter the balance between complainants and registrants in both UDRP and URS cases involving domains at new and existing gTLDs, and ICA intends to fully engage in the ensuing debate.
These suggestions are contained in an October 4th letter sent by Assistant Secretary for Communications and Information Lawrence Strickling to ICANN Board Chairman Steve Crocker (letter available at http://www.icann.org/en/news/correspondence/strickling-to-crocker-04oct12-en).
In regard to considering new trademark protections beyond those being implemented for the new gTLD program, the letter urges ICANN to “explore additional trademark protections across all TLDs, existing and new, through community dialogues and appropriate policy development processes in the coming year”. (Emphasis added) This call for initiation of a policy development process (PDP) for altering trademark protections at incumbent gTLDs is at direct odds with a mid-December 2011 resolution passed by ICANN’s GNSO Council, made under substantial pressure from the Governmental Advisory Committee (GAC) and major brand interests, to defer initiation of any PDP until 18 months after the first new gTLD is delegated to the root. GNSO Resolution 20111215-1 (available at http://gnso.icann.org/en/resolutions) states:
RESOLVED further, the GNSO Council requests a new Issue Report on the current state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to, the UDRP and URS, should be delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD.
At the time, ICA and many other groups were urging the GNSO Council to initiate a PDP on procedural UDRP reform based on a decade of UDRP experience, and rejected the notion that ICANN and the community lacked the capacity to simultaneously implement the new gTLD program and consider procedural improvements. When the GNSO passed on that option, it was expected that the first new gTLD would be delegated in early 2013 and that the PDP would therefore kick off in mid-2014 – but intervening events have now pushed the schedule back by at least a year.
We see several major issues raised by Secretary’s Strickling’s suggestion:
Again, there is plenty to evaluate and decide in any procedural UDRP PDP without debating substantive changes to rights protections. ICA has advocated that the heart of such reform be the development of a standard contract for all UDRP providers that delineates and limits their powers and provides ICANN with effective and flexible enforcement tools, with clear goals such as assuring uniformity and integrity in decision-making and the prevention of forum shopping. The need for such a contractual framework was illustrated again by the recent updating of attorney Zak Muscovitch’s survey of National Arbitration Forum (NAF) panelist selection procedures. The updated August 2012 study (available at http://dnattorney.com/NAFdomainnamedisputestudy2012.shtml) found that, while NAF claims to have 136 panelists on its trademark experts roster, 70 of whom (about half) were from the United States, in actual practice only seven of these panelists, all from the U.S., decided almost half (45.9 percent) of UDRP complaints filed with NAF.
So, clearly, one provision of a standard UDRP provider contract could be that when a provider is accredited by ICANN on the basis of claiming a large number of panelists from a variety of jurisdictions it should be required to actually use those panelists on a random basis — and not direct nearly half of all cases to a favored five percent of those panelists. The Muscovitch study certainly raises further questions about the quality of decisions provided by the number two UDRP provider. Earlier this year ICA requested that ICANN investigate NAF’s UDRP practices (see http://internetcommerce.org/NAF_UDRP_FAIL) and the response we received to our letter was unsatisfactory and indicated that ICANN takes UDRP provider oversight less seriously than it should. Frankly, we have always found it outrageous that ICANN accredits UDRP arbitration providers to extinguish or transfer valuable domain assets without any written or enforceable standards – trademark owners wou
ld never stand for a private entity being given such powers over their assets absent written and credible controls.
We do note that in Secretary Strickling’s letter the NTIA does not take a position for or against any potential trademark protection proposal, and does advocate that “ICANN should continue an open and transparent dialogue between all actors in order to find solutions to these issues”. (Emphasis added) ICA definitely intends to be a clear and consistent voice in that dialogue for the proposition that registrant rights must receive balanced treatment vis-à-vis trademark rights.
As for the letter’s advocacy for a clear linkage between the TMC and URS and to “provide efficient default judgment procedures” in the URS, we have two big concerns —
URS default judgments would be too much like the IP-based, due process-lacking “domain censorship” that would have been authorized by the SOPA legislation that incited a netizens revolt earlier this year. It is also just too prone to potential abuse, as no human expert would be checking to see if the rights holder complainant actually possessed the rights it claimed, or reviewing the domain name to see if it actually constituted a black-and-white, slam dunk instance of cybersquatting. We have nothing against a URS that is as cost-efficient as possible – but not at the cost of cheapening domain registrants’ rights.
We already expected the upcoming Toronto meeting to feature quite a bit of heated discussion of the final shape of RPMs for new gTLDs. By throwing .com and other incumbent gTLDs into the mix, and pushing the default judgment proposal, the Strickling letter should raise the temperature to an even higher level.
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