ICA Counsel Chosen as Interim Chair of Working Group to Review all RPMs in all gTLDs – Including the UDRP

On March 9th, 2016, during its final open meeting at ICANN 55 in Marrakech, Morocco, the GNSO Council approved a motion that I proposed to adopt the Charter of the Policy Development Process (PDP) to Review all Rights Protections Mechanisms in all Generic Top-Level Domains. I serve on the Council as one of the two representatives of ICANN’s Business Constituency, and my fellow Councilors designated me to serve as the GNSO’s Liaison to the Working Group (WG), and as its Interim Chair.

The Motion approved by the Council provided ICANN staff with a 21-day deadline, ending March 30th, to issue a public call for volunteers to serve on the WG. It is expected that the WG will likely schedule its first virtual meeting in the latter half of April, at which point it will begin to organize its work plan and select a permanent Chair or, more likely, several Co-Chairs. While my selection as Interim Chair is not a guarantee of being one of this WG’s Co-Chairs, I do hope to secure that official role. While not being precluded from advocating particular views in their personal capacity, a Chair or Co-Chair must be fully committed to putting aside their personal views or those of their clients/employer in regard to their official administrative duties and responsibilities to the diverse membership of the WG — and to assure that all WG volunteers have a fair chance to advocate their views and have them considered. Should I secure a Co-Chair slot I will be committed to helping to manage a fair and open process that produces a final report and recommendations that is based in sound legal reasoning and verified empirical data – and that all WG participants can be proud of having contributed to.

While many volunteers will already be participants in ICANN Supporting Organizations (SO) or Advisory Committees (AC), that is not a prerequisite for WG participation. ICANN’s WG Guidelines note that a WG should ideally “mirror the diversity and representativeness of the community”, and that the WG Chair(s) have the responsibility of continually assessing whether the WG has sufficiently broad representation or, conversely, “over-representation to the point of capture”.

The Charter sets forth a two-phased approach, described here:

This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. By the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals.

This PDP may well draw volunteers by the dozens given the importance of the issues it will examine to the trademark law, brand protection, domain investment, and IP public policy sectors, as well to the business models of ICANN’s contracted parties, both registries and registrars. Involvement may be further boosted by the likelihood that any final recommendations made by this WG that are subsequently adopted by ICANN may well fix the rules for the intersection of trademark law and domains for the next decade or more.

Those considering volunteering should be aware of the substantial time commitment involved. Once the WG launches I would expect it to hold a one-hour call almost every week. My personal guesstimate is that the review of new gTLD RPMs will take at least twelve to eighteen months – and that the subsequent UDRP review could take even longer, given the breadth of potential procedural and substantive issues, and the fact that this will constitute the first review of the UDRP since it was adopted at the dawn of ICANN’s creation.

Some members of the domain investment community, as well as other interested parties, may be thinking of waiting until the phase two review of the UDRP commences before becoming engaged in the WG. In my view that would be shortsighted, as working relationships and individual credibility will be established during the RPM phase that will be critically important when the WG pivots to review of the UDRP.

In addition, as the non-exclusive list of Potential Issues listed in the Charter makes clear, the Phase One determination of answers to some of the questions could have a substantial impact on, and set precedents for, the subsequent UDRP review. For example, regarding Uniform rapid Suspension (URS), issues to be considered include:

  • Is the URS’ ‘clear and convincing’ standard of proof appropriate? This is higher than the UDRP’s preponderance of the evidence standard and demarks a clear difference between the URS and UDRP by placing a higher burden of proof on the Complainant.
  • Should the URS allow for additional remedies such as a perpetual block or other remedy, e.g. transfer or a “right of first refusal” to register the domain name in question? Many domain investors fear that permitting domain transfer could convert the URS into a UDRP substitute and low-cost vehicle for domain hijacking; trademark owners counter that mere suspension of a blatantly infringing domain allows it to be re-registered in the future.
  • Should there be a loser pays model? If so, how can that be enforced if the respondent does not respond? Monetary penalties are not a current feature of the UDRP for either abusive registrants or complainants.
  • What sanctions should be allowed for misuse of the URS by the trademark owner? There is presently no penalty for attempted use of the UDRP for Reverse Domain Name Hijacking, other than a verbal citation.
  • How can the appeals process of the URS be expanded and improved? While the UDRP permits either losing party to appeal to a court of mutual jurisdiction, there are no mechanisms to set binding precedents that would assure greater consistency and predictability in panelist decisions.

Likewise, the review of the Trademark Clearinghouse (TMCH) will address such questions as:

  • Should the TMCH matching rules be expanded, e.g. to include plurals, ‘marks contained’ or ‘mark+keyword’, and/or common typos of a mark?
  • Should notices to the trademark owner ought to be sent before the domain is registered?

TMCH registrations are currently limited to trademarks meeting high verification standards – plus, under the Trademark+Fifty supplementary implementation measure, variations of the mark that have actually been recovered by the rights holder in a UDRP filing or trademark infringement litigation can also be registered. Attempting to register a domain  matching a registered mark or TM+50 variation generates a Trademark Claims Notice to the potential registrant, and UDRP panels have yet to clearly define the weight that will be given to receipt of a Claims Notice in determining whether a subsequent domain registration was made in bad faith.

Finally, as for Trademark Claims, review issues include:

  • Should the Trademark Claims period be extended beyond ninety (90) days?
  • Does a Trademark Claims period create a potential “chilling effect” on genuine registrations, and, if so, how should this be addressed?
  • Is the TMCH providing too much protection for those with a trademark on a generic or descriptive dictionary word, thus allowing a trademark in one category of goods and services to block or postpone the legitimate and rightful use of all others in other areas of goods and services? Are legitimate noncommercial, commercial and individual registrants losing legitimate opportunities to register domain names in New gTLDs?
  • How should the TMCH scope be limited to apply to only the categories of goods and services in which the generic terms in a trademark are protected?
  • Should TM +50 be reversed?

While the review has been designed as a two-phased process to make the workload manageable, and to first address potential modifications of new gTLD RPMs before a subsequent round of new gTLDs is launched, this illustrative list of issues makes clear that determinations made during phase one will inevitably implicate the phase two UDRP review.

There is of course a possibility that the WG will encounter significant internal turbulence, especially if some participants seek to re-litigate every substantive aspect of the new gTLD RPMs as well as of the UDRP. On the other hand, there is tremendous opportunity to seek common ground and undertake procedural reforms that provide greater assurance of consistency and predictability for both rights holders and domain registrants — especially if undertaken within a balanced approach recognizing the legitimate rights and interests of all parties, and acknowledging that ICANN’s proper role is to respect legal rights while refraining from the creation of new extralegal rights.

Anyone with a serious interest in trademark rights, domain monetization, and domain industry operations should give serious consideration to joining this WG, while remaining fully cognizant of the long and potentially difficult road ahead. Important and challenging work will be on the agenda for all who choose to engage as volunteers.

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