ICA on the Record at ICANN 45-Toronto

While ICANN provides excellent remote participation technologies for its thrice-yearly public meetings, it’s been our experience that there is no real substitute for attending in person if you want to get the full picture of activities and have a meaningful impact. A tremendous amount of information is gained from hallway and other informal conversations, and it also allows for one-on-one networking with other participants as well as ICANN staff and Board members.

The October meeting in Toronto was no exception, and full transcripts have finally become available for both sessions in which ICA Counsel Philip Corwin made public remarks.

The first occasion was at the meeting held to discuss implementation of Uniform Rapid Suspension (URS) on Thursday, October 18th. It was presided over by ICANN staff member Olaf Nordling and featured presentations by Kristine Dorrain of the National Arbitration Forum (NAF), David Roache-Turner of the World Intellectual Property Organization (WIPO), and Brad Bertoglio and noted IP attorney Paul McGrady on behalf of the new start-up and potential URS  arbitration provider Intersponsive Corporation.

Phil’s first question at the session was an inquiry into whether NAF and WIPO would be making an inquiry into the bona fides of the rights claimed by a complainant even in those “default’ URS proceedings in which the registrant did not file a response, as well as other aspects of their proposed treatment of default cases.

His question and their responses follow:

 

http://toronto45.icann.org/node/34325

PHILIP CORWIN: Philip Corwin, Council of the Internet Commerce Association. I’d like to get some clarification, and it’s particularly important because the board last year under some pressure from the GAC cut the response time from the registrant down to 14 days. In the event of default between the NAF and WIPO proposals is there at a minimum a determination that the complainant actually possesses the claimed rights in the trademark or name at issue?

And Kristine, you referred to someone making at least a prima facie determination. What does that consist of? And in the WIPO model is there an attorney looking to determine that it appears to be a black and white incontrovertible case of infringement or is it just an automatic loss without that review by an attorney when there’s a default?

KRISTINE DORRAIN: Thanks, Phil. Yeah, NAF’s proposal is that somebody with trademark credentials would look over every complaint that defaulted and make sure that the complainant had provided their registration, had provided the proper proof of use and had made colorable arguments, very similar to the way Neustar’s Nexus policy works for .us.

It’s a situation where the provider does a prima facie determination to make sure the complainants brought their complaint, and if the respondent defaults, an additional letter is sent. If the respondent still doesn’t respond, then the decision just goes for the respondent in its cancellation, so that would be very similar to how we work that process.

DAVID ROACHE-TURNER: Yes, thanks for the question, Phil. Indeed, under the WIPO proposal we would contemplate that there would be a validation of the trademark rights that would be claimed by the complainant that could occur in one of two ways. Obviously via the clearinghouse—it would be up and operational—and otherwise by validation of a provided trademark registration. That validation would be done by the case manager.

At WIPO we employ attorneys to manage cases so we would envisage that that analysis would be done by one of those with a second check by a trademark expert in house if need be in cases of uncertainty.

Phil’s second question was posed later in the session, after David Roache-Turner stated that WIPO believed “that given the remedy which is prescribed, which is a temporary reversible suspension, and the fact that the respondent is under our model given a right to submit a response model, form response, prescribing a fairly low threshold that the ability to manage the risks of determinations against the respondent is sufficiently controlled by the fact that the respondent can come back at any time with a response at no cost and reverse the effect of that suspension remedy.” In other words, WIPO thought it okay for a registrant to automatically lose in every default case with no need for expert panelist’s appointment and review because an appeal could be filed after the domain was suspended.

Since the Toronto meeting took place, ICA participated in a joint working group constituted by members of the Business and Intellectual Property Constituencies in which the proposed WIPO model calling for an automatic respondent loss in all default URS cases was rejected, with the consensus being that even in such cases there must be some substantive determination that the domain in question was in fact infringing based upon bad faith registration and use under the URS “clear and convincing” standard for burden of proof. Nonetheless, at the time of the Toronto meeting that issue was very much in play (and remains so today, since the final implementation model for the URS has not yet been fully locked down), and Phil responded strongly to WIPO’s viewpoint with a reference to the proposed SOPA domain suspension legislation that was the subject of global criticism early in 2012:

 

PHILIP CORWIN: Phil Corwin again. I’m delighted to hear that there’s going to be at least one bid which takes an innovative approach and believes that it can provide the service with the present model without changes at the target price.

Let me say what disturbs me about the WIPO proposal, which is default with no panel, which means no examination. The URS requires a determination at a higher standard of proof than the UDRP that there’s been bad faith registration and use, particularly when the right is in a trademark which can be a generic name. You cannot know if there is infringement without both seeing if it looks obvious from the domain name and looking at what’s going on at the domain to see if there’s bad faith use.

This notion that it’s okay to suspend domains because there’s a chance to come back and it’s no big deal - it’s a very big deal! There was very controversial legislation that Congress deep sixed this year because, called SOPA, based on claims in both copyright and trademark rights, that became so controversial that the Internet went dark for a day. Millions of people were bombarding Congress with emails. The White House took a position that killed the bill and it was just about suspensions, it wasn’t about transfers.

So suspending domains that are a platform for commerce and speech is a very big deal and a proposal that lets a suspension happen without any review of the use of the domain is just not acceptable to the folks I represent, so that’s my comment.

 

Phil’s other comment was delivered to the ICANN Board during the Public Forum that took place later that day, on the afternoon of October 18th. It alerted the Board that ICA had recently published its “Domain Rights Dozen” (see http://internetcommerce.org/Domain_Rights_Dozen) principles for reviewing any proposed alterations of new gTLD rights protection mechanisms. That debate continues today with consideration of the so-called Strawman Model for Trademark Clearinghouse implementation, about which ICA will have more to say in future posts as well in a public comment to be filed with ICANN.

The Public Forum remarks follow:

 

http://toronto45.icann.org/node/34215

 

PHILIP CORWIN: Good afternoon. Philip Corwin speaking in my capacity as counsel for the Internet Commerce Association. I want to start by commending the board and Chairman Crocker for, in the discussion earlier today, noting  the suggestions that have come from some constituencies for changes in the rights protections, that you're working toward evidence of broader support from the GNSO prior to consideration. And we think that's proper, particularly since some of those suggestions look like going beyond mere implementation to policy changes.

I just wanted to bring to your attention that last week we published a list of 12 principles that will guide our association's review of any proposals for changes in the RPMs. They were published at our Web site internetcommerce.org as well as circleid.com.

I'm certainly not going to read the entire list but did want to mention just a few of them. The first and most important is that domains constitute a bundle of valuable intangible rights, similar to trademarks and other IP rights, and that reasonable balance must be achieved between trademark owners and domain registrants.

Another is that the RPMs, whatever they are, should enforce and protect certainly existing trademark rights, but not expand those rights, and -- or create new rights. And we commend the new CEO for stressing that point in a letter he sent last month to Congressional leaders in regard to the suggestion for adding marks plus generic terms to the trademark clearinghouse database.

We think suggestions for URS changes premised on cost savings must prove -- must actually save costs, and then await market testing of the model.

And finally, it's very important that the URS providers be placed under contract to assure uniformity.

Thank you.

STEVE CROCKER: Thank you.

 

(Note: Minor typographical and grammatical changes were made to the published transcripts of the above remarks.)