Last month, in response to continuing concerns and some outright confusion about whether brand owners would be compelled to pony up $185k application fees for defensive gTLD registrations, ICANN opened up a comment period for the purpose of clarifying the matter. While the invitation to comment made clear that input was only being solicited in regard to top level registrations, a number of trademark interests misused the opportunity to again pitch ideas for second level rights protection mechanisms (RPMs) that have already been rejected multiple times by the ICANN community and Board.
Chief among these was lowering the URS complainant’s burden of proof to exactly the same standard as for a UDRP, and providing the complainant with an option to have the domain transferred to them , not just suspended. In other words, while the URS was originally portrayed as a narrow supplement to the UDRP that would confined to “slam dunk”, “know it when you see it” cases of crystal clear trademark infringement, some trademark interests have been unrelenting in their efforts to convert it into a bargain basement substitute for the UDRP that would further cheapen registrant rights.
ICA didn’t comment in the initial round, but we felt compelled to chime in during the reply period in reaction to these attempts to reopen a divisive debate that we thought had been closed, at least for the first gTLD application round, by the ICANN Board’s rejection of these proposals and its adoption of a near-final Applicant Guidebook in Singapore last June.
Our comment letter also addressed another horrendous idea recently advocated by a former President of ICANN’s Intellectual Property Constituency – that ICANN, in its negotiations with VeriSign regarding the upcoming renewal of the .Com registry agreement, should impose URS at .Com. The notion that the largest and most valuable gTLD should be saddled with a thoroughly untested RPM when it’s not even clear that a credible arbitration provider can be secured strikes us as the height of absurdity and irresponsibility – yet, since ICANN’s CEO said he’d have legal staff look into it, we must take it seriously.
Imposition of URS on .Com via contract would also thoroughly undermine ICANN’s policymaking process. Just four months ago ICANN’s GNSO Council acquiesced to trademark interest pressure and agreed to defer the initiation of any UDRP reform process until mid-2014 at the earliest, notwithstanding continuing concerns about the UDRP (such as some very questionable NAF substantive and procedural practices that ICA brought to ICANN’s attention last month). The rationale for the delay was so that the experience with new RPMs like URS could be considered in the context of UDRP reform, especially as regards whether they should be implemented for incumbent gTLDs. Yet, having sidetracked the reform process, some in the trademark community would now like URS imposed on .Com through a backdoor contract negotiation. We suggest that they might want to pool resources and apply for their own new gTLD – .Chutzpah.
The ICA comment letter follows—
Philip S. Corwin, Founding Principal
1155 F Street, NW Suite 1050
Washington, DC 20004
March 20, 2012
Board of Directors
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601
Re: Reply Period on “Defensive Applications for New gTLDs”
Dear ICANN Board Members:
I am writing on behalf of the members of the Internet Commerce Association (ICA) in regard to ICANN’s Reply Period in regard to Defensive Applications for New gTLDs (http://www.icann.org/en/news/public-comment/new-gtlds-defensive-applications-06feb12-en.htm ). This Reply Period was opened on February 28th and closes today, March 20th.
ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.
ICA did not file a comment during the initial comment period because the ICANN Notice in its entirety was quite clear that feedback was being solicited only in regard to the top level of new gTLDs; including this statement:
ICANN is seeking public comment on the adoption of enhanced protections, to which some stakeholders recently indicated that there are concerns about the perceived need for “defensive” applications at the top level, and encouraged ICANN to ensure that the program was launched in a manner that protects intellectual property rights. (Emphasis added)
Nonetheless, certain trademark interests abused the comment period to request substantive changes in and additions to new rights protection mechanisms (RPMs) at the second level,
including alterations of Uniform Rapid Suspension (URS) that would render it a cut-rate alternative to the Uniform Dispute Resolution Policy (UDRP) at the expense of cheapening registrant rights. These commentators are seeking to have a fifth bite at the policy process apple in regard to second level protections.
Their first bite was within the GNSO’s initial policy process for the rules applicable to new gTLDs.
The second bite was when they convinced ICANN to authorize formation of the Implementation Review Team (IRT) dominated by complainant-oriented trademark attorneys, which commenced to operate in violation of ICANN Bylaws mandating transparency and produced a series of recommendations so unbalanced in their totality that they brought forth an outcry from multiple ICANN stakeholder groups and the overall community.
The third bite was during the deliberations of the Special Trademark Issues – Recommendation Team (STI-RT), which introduced some reasonable balance into the reshaping of the IRT’s recommendations while still establishing substantial new RPMs. The STI-RT reached consensus within a remarkably short time and its proposals were subsequently adopted unanimously by the ICANN Board.
The fourth bite was when trademark interests, dissatisfied by the balanced consensus recommendations of the STI-RT, vigorously lobbied members of ICANN’s Governmental Advisory Committee (GAC) who subsequently sought to reopen previously settled matters at the behest of these interests. ICANN’s Board, to its credit, defended the multi-stakeholder policymaking process and refused to alter substantive aspects of the URS, agreeing only to relatively minor implementation changes.
And their fifth (and hopefully final) bite, at least in regard to any second level protections applicable to the first new gTLD application round, was made in response to this ICANN Notice.
ICA will confine its reply comments to matters affecting second level domain registrations in new gTLDs.
ICA’s Response to Suggestions for Alterations of Second Level Rights Protections in New gTLDs
We have reviewed all comments filed in the initial round. While the majority properly confined their comments and recommendations to issues involving the top level, a minority proposed a variety of fundamental alterations of and additions to the second level protections contained in the current Applicant Guidebook – principally URS.
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:
There is one implementation suggestion which we tend to favor. The Business Constituency (BC), of which ICA is a member, has proposed the URS initially be administered by a sole vendor, supervised by ICANN. Given the unprecedented nature of the URS, use of a single vendor at initiation would eliminate the type of forum-shopping we have witnessed even for the long-established UDRP.
However, whether the URS is be administered by a sole or multiple arbitration entities, it must be priced at the true cost of the proceeding in order to assure that only qualified entities participate, and to prevent any cross-subsidization of well-moneyed trademark interests by other ICANN constituencies. Further, as recommended by the STI-RT, ICANN should place the URS provider(s) under a standing binding contract that clearly delineates the limits of its/their powers and provides ICANN with a full and flexible range of enforcement mechanisms to ensure compliance.
Finally, the BC made two additional suggestions which we tend to favor but believe are substantive matters that should not be made through a comment process like this but through the standard multi-stakeholder process with broad community discussion and Board approval:
Imposition of URS on .Com
At the final ICANN new gTLD kickoff event held by ICANN in Washington, DC in January, a former President of ICANN’s Intellectual Property Constituency (IPC) publicly suggested that ICANN should require VeriSign to implement URS for .Com domains as it negotiated a renewal of VeriSign’s registry operator contract this year. CEO Beckstrom replied that he would refer this suggestion to ICANN’s General Counsel for consideration.
We are unalterably opposed to this suggestion for 2012 contractual imposition of URS on .Com , both on its own demerits as well as because it would usurp the policymaking role of the Generic Names Supporting Organization (GNSO) Council.
More than 100 million domains are registered in .Com. It is by far the largest gTLD and constitutes almost half of all existing domains in both gTLDs and ccTLDs. Non-infringing domains registered at .Com tend to have substantial secondary market value – sometimes reaching the $millions. The reckless notion that a thoroughly untested RPM should be foisted on the most important gTLD absent any experience – indeed, absent any assurance that a qualified provider can even be located and retained – is absurd on its face.
Second, imposing URS on .Com through a contract negotiation would completely undermine the December 2011 policy decision made by the GNSO in regard to initiation of a policy development process (PDP) for UDRP reform.
Motion 20111215-1(see http://gnso.icann.org/resolutions/#201112 ) states in relevant part:
Whereas, a Final Issue Report was published on 3 October 2011 (http://gnso.icann.org/issues/udrp/udrp-final-issue-report-03oct11-en.pdf) in which ICANN staff recommended the GNSO Council consider the “perspective of the majority of the ICANN community, and the advice of the Government A
dvisory Committee (GAC), and the At-Large Advisory Committee” and that “a PDP be delayed until after the New gTLD Uniform Rapid Suspension System (URS) has been in operation for at least eighteen months. . . to allow the policy process to be informed by data regarding the effectiveness of the URS, which was modeled on the UDRP, to address the problem of cybersquatting.”
…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. (Emphasis added)
ICA did not agree with that GNSO Council decision, which defers the initiation of UDRP reform until at least mid-2014 – 18 months after the likely launch of the new GTLD program. We believed and repeatedly stated, verbally and in writing, that after more than ten years of operation and in light of substantial grievances from both registrants and complainants, the UDRP was deserving of at least procedural policy reform.
But trademark interests vigorously resisted initiation of UDRP reform at this time, in large part to assure that any deferred reform process would consider the imposition of the URS and other new gTLD RPMs on incumbent gTLD registries. Having achieved their objective, it is rather astonishing for some to now suggest that ICANN should undermine the GNSO’s policymaking role by imposing URS through contract negotiations. ICANN should firmly reject that suggestion.
ICANN staff recommended that UDRP reform be delayed so that the policy process could be informed by data regarding the effectiveness of the URS. Their clear intent was to allow any consideration of imposing the URS on incumbent gTLDs to be informed by the URS experience with new gTLDs, and to subject that consideration to the rigors and multi-stakeholder review of the standard PDP.
We agree that any consideration of URS for incumbent gTLDs, especially .Com, should only occur within the full PDP context. If trademark interests wish to have their concerns about the UDRP addressed then they should join with ICA in urging the GNSO to reconsider its decision to defer initiation of a UDRP reform PDP for more than two years.
The ICA’s view is that the numerous procedural and structural flaws in the UDRP fail to provide adequate protection of the legitimate rights of domain registrants from abuses perpetrated by some overreaching trademark holders. ICANN’s priority should be reforming the flaws in the current UDRP to assure adequate balance to the UDRP process, chief among them the elimination of forum shopping and forbidding the empanelment of Complainant attorneys as ‘neutrals’ in third-party cases.
Further undermining the rights of legitimate domain registrants, who constitute 99% of domain owners — including small businesses, non-profit organizations, and myriad individuals — by the premature adoption of an untested URS system for any incumbent gTLD would create an environment ripe for abuse by those who already abuse the UDRP. This would be the wrong decision for ICANN and for the Internet community as a whole.”
ICA appreciates this opportunity to comment in the Reply Period regarding Defensive Registrations for New gTLDs.
As stated above, we urge ICANN to reject the vast majority of second level suggestions that were outside the scope of the original request – and which would effect major substantive changes in the substance of the URS and related RPMs after the opening of the application process and outside the multi-stakeholder scrutiny of the standard policy process.
While we do find some merit in the BC’s suggestions for a “do not re-register” list of domains suspended in URS actions, and for a registrar-implemented “notice-and-takedown” system, both of these proposals raise a myriad of considerations that should be addressed through the normal policy process. There is ample time for that to occur if ICANN starts soon.
Finally, we urge ICANN to concede that it is not realistic to price a credible URS procedure at $300-500 and to issue a Request for Proposal (RFP) as soon as possible which attracts one or more qualified provider applicants. ICANN also needs to form an Implementation Advisory Group (IAG) — similar to the one established for the Trademark Clearinghouse (TCH) last fall, in which ICA has been participating – so that all of the implementation details raised by the URS can be considered and adequately addressed prior to its launch.
Registrants need to be assured that their legitimate due process rights will be respected by the URS as implemented. To that end, we again strongly urge that ICANN, pursuant to the recommendation of the STI-RT, place any selected URS provider(s) under a standard enforceable contract.
Thank you for considering our views in this matter.
Philip S. Corwin
Counsel, Internet Commerce Association
 We note that under Section 5(d)(ii)(3) the RES Policy established by ICM Registry for .XXX domains “no information regarding decisions made under this RES will be publicly published by the Registry, the Provider or the Evaluator; only aggregate statistical information about the RES process itself, including decision percentages, may be published by the Registry and/or the Provider.” While we understand that this Policy was adopted due to the unique ‘adult content’ nature of .XXX domains, such a policy would be unacceptable as a general rule for application of the URS at new gTLDs. The only way in which the community and all affected parties may judge the effectiveness and other aspects of the URS, including adequacy of registrant due process, is to mandate publ
ication of all URS decisions. (http://domain.adrforum.com/users/icann/resources/RES-Policy.pdf )
 We strongly concur with the comments previously filed by the Non-Commercial Users Constituency (NCUC; available at http://forum.icann.org/lists/newgtlds-defensive-applications/pdf36DS0wOVgy.pdf ) to wit:
“At the end of last year, the Generic Names Supporting Organization (GNSO) Council has been discussing and debating about a possible review of the Uniform Domain Name Dispute Resolution Policy (UDRP) – an issue that the majority of the ICANN community felt had to be addressed. Concerns were expressed over the potential impact of such a review upon the roll out of the new gTLDs. The decision of the GNSO Council to postpone the review of the UDRP has signaled the general understanding that interfering with any of the RPMs at this time is not advisable and, therefore, the ICANN community should wait and start evaluating them after the new gTLDs have rolled out. NCUC, therefore, finds it very disconcerting that this same justification is not used for these current discussions. This is a double standard… Given the fact that both the URS and the UDRP are meant to be reviewed at different times after the launch of the new gTLD programme, we strongly suggest that any reconsideration of additional RPMs should be postponed until after such reviews have been conducted and have established that there is a tangible need that warrants the re-evaluation of the existing RPMs and their substantive provisions.”
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