Why Is ICANN Reopening the Issue of Second Level Defensive Registrations at New gTLDs?

 

 

One of the most frustrating aspects of dealing with ICANN is that, regardless of whether one agrees or disagrees with its policy decisions, it often seems incapable of sticking to them for very long. Certainly there’s a virtue to being open to reexamining certain matters. But when an issue has been debated ad nauseam there comes a point where no new argument can be made, no new information is forthcoming, and there’s absolutely no reason to revisit the matter — especially if it’s a divisive one.

 

Yet ICANN has just done it again. On April 10th its just-created New gTLD Program Committee (

http://www.icann.org/en/groups/board/new-gtld), consisting of those Board members who have no conflicts in regard to the new gTLD program, plus the CEO, approved a Resolution on the subject of “Defensive Applications for New gTLDs” (http://www.icann.org/en/groups/board/documents/resolutions-new-gtld-10apr12-en.htm). And that Resolution contains this troubling paragraph:

Resolved (2012.04.10.NG2), while the New gTLD Program Committee is not directing any changes to the Applicant Guidebook to address defensive gTLD applications at this time, the New gTLD Program Committee directs staff to provide a briefing paper on the topic of defensive registrations at the second level and requests the GNSO to consider whether additional work on defensive registrations at the second level should be undertaken; (Emphasis added)

There’s nothing in the portions of the Resolution preceding this directive for a new staff briefing paper and requesting further GNSO consideration to justify these actions – indeed, the Resolution notes that “the Board approved the New gTLD Program with protections for certain interests and rights, and intellectual property rights in particular”. In fact there was no issue that was more extensively, exhaustively, and emotionally debated in the development of the Applicant Guidebook than the new Rights Protection Mechanisms (RPMs) for new gTLDs. As noted at the end of the Resolution, there will eventually be a “[Rationale to be provided with Minutes.]” – but it can take some time before those Minutes are ever released, and they are often not very illuminating.

The Resolution also contains a passage with which we take some issue –

Whereas, ICANN held a public workshop during ICANN’s public meeting in Costa Rica to hold a community discussion regarding suggestions raised during the comment period, and additional suggestions with participation from the community (http://costarica43.icann.org/node/29711);

Whereas the New gTLD Program goals include the protection of established legal rights,;

Whereas, a summary and analysis of public comment was performed and the discussion in the public workshop was transcribed;

Whereas the sense of the public discussion indicated that trademark protections should continue to be discussed and developed for the registration of second-level domain names and also indicated that cybersquatting was not likely to be a significant issue in the registration of top-level domain names;

We attended that public workshop in San Jose and it is not our recollection that the “sense of the public discussion” was that second level protections should be discussed and further developed. Rather, our recollection was that the discussion primarily and properly involved top level protections; and to the extent there was any discussion of the second level, trademark interests wanted Uniform Rapid Suspension (URS) reopened and most everyone else wanted to let that sleeping dog lie.

ICA spoke out strongly at both that workshop and the Public Forum with the Board against any reopening of the substantive URS elements (http://internetcommerce.org/ICANN_San_Jose_Public_Forum_URS). But we’ve learned that we often perceive things differently than ICANN’s staff, which also declared in the past year that procedural UDRP reform was such a sensitive and highly charged topic that it would be too destabilizing to even discuss it for the next several years, when we thought we had detected a clear community consensus in favor of starting that process now and not in mid-2014.

Any reopening of the issue of defensive registrations at the second level of new gTLDs will likely focus on altering the URS, since the draft implementation model for the Trademark Clearinghouse (TMC) was completed and circulated on April 13th and will likely be finalized in May. (Note: ICA participated in the Implementation Advisory Group (IAG) for the TMC.)

One of the highest priorities for some trademark interests has been to turn the URS into a bargain basement priced, rough justice substitute for the already flawed UDRP. As ICA stated in our recent letter to ICANN in regard to the issue of defensive registrations:

There is an initial group of suggestions that we oppose both on substantive grounds and because their addition now, after the first application round has commenced, would make material changes in the program and are not mere technical implementation details. Any such changes of this nature should be made only on the basis of experience with the first round – and then only through ICANN’s multi-stakeholder process with the requirement of Board approval.

Those unacceptable suggestions include:

  • · Reducing the burden of proof in a URS proceeding from “clear and convincing” to “preponderance” of the evidence, and providing a domain transfer option (rather than just domain suspension) to the rights holder. Both of these suggestions were advocated to the ICANN Board by the GAC and both have been rejected by the Board as not representing the consensus reached by the community at the end of a long, arduous and often divisive process. Taken in combination, these suggestions would make the URS indistinguishable from the UDRP – other than in pricing, and almost certainly at the expense of registrant rights. URS has been advocated consistently as a supplement to the UDRP, not a substitute for it, and adoption of these suggestions would change its essential nature and make it a cheapened substitute.

(The full list of unacceptable suggestions made by trademark interests during that comment period, and that will again be likely advocated if second level issues are reopene
d, can be found in the text of our letter available at
http://internetcommerce.org/Defensive_Registrations_Second_Level ).

Summing up, what has happened here is that, for no discernible reason, the New gTLD Program Committee has issued a staff directive and a GNSO request that could well lead to reopening one of the most divisive issues of the entire new gTLD program. This action was taken just in advance of ICANN’s rather embarrassing and still ongoing closure of the TAS application system. And we have little doubt that there will likely be other unanticipated problems, controversies, and even litigation as the new gTLD program rolls forward – so why seek to reignite yet another argument?

It also occurs at a time when ICANN has not yet issued its Request for Proposals (RFP) to provide URS arbitration services (perhaps because credible providers are unlikely to be found at the promised but unrealistic price of $300-500 per filing), and has not yet assembled a community-based IAG for the URS. Before any thought is given to altering the substantive elements of the URS, ICANN might first want to focus on  implementing it in a credible and workable manner.

We don’t have any idea where this Resolution will lead – like so many ICANN processes it may go nowhere, slowly. But we are disturbed that trademark interests who abused the comment period on defensive registrations at the top level have now apparently been rewarded with the prospect of reopening the second level debate.

If ICANN again contemplates substantive changes in the URS the ICA will once again speak loudly and clearly on behalf of registrant procedural and substantive due process rights. But does ICANN really want to set off another extended argument on this well-trod subject that will likely coincide with the time when new gTLDs will be soliciting domain registrants – potential registrants who will be informed by this entirely avoidable debate that their rights, already different from what exists at incumbent gTLDs, may be further diluted?

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