ICA Inquires Whether Third Party Counsel Will Be invited to Participate in ICANN/Board GAC IP Teleconferences – and Suggests a Better Alternative to URS Domain Transfer

The Internet Commerce Association has just sent an urgent letter of inquiry to ICANN’s Board Chairman and CEO raising two critical issues arising out of the just-concluded Board/GAC meeting in Brussels.

The first issue is whether the GAC will be permitted to invite corporate brand trademark counsel to participate as the exclusive “IP experts” in upcoming Board/GAC teleconferences on IP issues. ICA’s position is that no third parties should participate in these calls – or, in the alternative, if the Board and GAC believe that expert legal advice would be beneficial, it should be provided by a diverse and balanced group of counsel whose identities are publicly disclosed.

The second responds to the Board’s initial acquiescence to the GAC request that a rights holder prevailing in a URS action receive first option to obtain a domain at the conclusion of its suspension period. ICA believes that this would do violence to the original intent that the URS be a supplement to, and not a substitute for, the UDRP. Therefore ICA has suggested that the Applicant Guidebook contain a final position that a domain that has been the subject of a successful URS action be permanently barred from re-registration. We believe that this alternative would have substantial benefits for multiple parties, including rights holders, without undermining registrant rights, the economic prospects of new gTLDs, or the UDRP reform effort recently initiated by the GNSO.

The text of the letter follows —

VIRTUALAW LLC

Philip S. Corwin, Founding Principal
1155 F Street, NW Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
psc@vlaw-dc.com
                   
March 3, 2011
By E-Mail
Peter DengateThrush, Chairman of the Board
Rod Beckstrom, President & CEO
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601

Dear Chairman Thrush and President Beckstrom:

I am writing on behalf of the domain name investors and developers of the Internet Commerce Association (ICA). 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. All of these entities, both individuals and companies, are small businesses. Despite the relatively small size of their organizations, ICA’s members collectively own or manage approximately ten percent of all currently registered generic domain names as well as substantial numbers of ccTLD domains.

This communication addresses two matters of considerable urgency related to the just concluded meeting between the ICANN Board and the Governmental Advisory Committee (GAC) in Brussels.

The first regards whether any parties other than ICANN Board members and staff, and GAC members and their support staff, will be invited to participate in teleconferences discussing potential resolution of the remaining intellectual property (IP) matters that are in contention between the Board and GAC.

The second regards the Board’s announced decision that URS complainants will be permitted to have first option to acquire a suspended domain at the close of its registration period. We believe that there is an alternative solution that will not do violence to the position of the IRT, sustained by the STI-RT, that the URS should supplement, and not be an alternative, to the standard UDRP – and that would have multiple other accompanying benefits, including some of considerable value to brand owners and other trademark interests.

Participation of Third Party Experts in IP Teleconferences

During the morning session held in Brussels on March 2nd, the UK representative (we believe it was Mark Carvell) stated that that teleconferences between the Board and GAC regarding remaining IP issues in disagreement would commence later this week. Previously, on February 28th, Mr. Carvell recounted how he had met with a large number of counsel for major brand owners, including BBC and Shell, in his offices. And, on March 1st, GAC Chair Heather Dryden stated that the GAC would want to have “our IP experts” on any calls devoted to discussion of unresolved IP issues.

It is not at all clear to us whether the “IP experts” noted by Ms. Dryden are to be public sector ministerial employees, or are the same big brand corporate counsel who have aggressively lobbied the GAC to reject the community consensus rights protection provisions that are in the current Applicant Guidebook and also encouraged GAC adoption of its current scorecard positions.

It is ICA’s position that either:

•    No parties other than Board and GAC members and their internal staff should participate in any teleconferences regarding IP issues, or, alternatively
•    If outside “IP experts” are invited to participate in order to assist the Board and GAC in understanding complex IP issues, they should represent a diversity of viewpoints and their identities should be publicly disclosed.

Allowing the participation of unidentified third party “IP experts” with only one perspective on these calls would recall the most controversial and troubling aspects of the IRT – inadequate diversity of views in the formulation and proposing of rights protection “solutions”, and lack of adequate transparency. All of the parties who had concerns regarding the IRT’s operation and recommendations – including contracted parties, ALAC, NCUC, etc.  — should be permitted to suggest participants in IP teleconferences if the Board and GAC believe that it is useful to have such experts available for counsel. For its part, ICA is prepared to submit a list of highly qualified outside counsel who specialize in UDRP defense, from which ICANN could select one or more experts to contribute their registrant-oriented perspective to the telephone discussions.

At this point in time we request assurance from ICANN that:

•    No outside counsel will be permitted to participate in the first IP teleconference later this week, as there is inadequate time to constitute a diverse group of experts.

•    If outside counsel are invited to participate in future calls, they will represent a fully balanced diversity of viewpoints and their identities will be publicly disclosed.

We believe that these are reasonable requests and will result in the Board and GAC receiving balanced information and advice as they continue their discussions of IP issues. They will also assure the full ICANN community that the final resolution of these contentious issues is being undertaken in a manner that is fully consistent with ICANN’s multi-stakeholder policy process and its commitment to inclusion and transparency.

URS As A UDRP Alternative

ICA commends the Board for its general defense of the community consensus provisions of the new Uniform Rapid Suspension (URS) mechanism that were shaped by the STI-RT deliberations, was subsequently adopted with unanimity by the GNSO and then by the Board, and is currently contained in the Guidebook

In particular, we are gratified that the Board assigned a rating of 2 (unworkable advice that the Board cannot follow) to the GAC scorecard suggestions for:

•    Replacing the clear and convincing evidence standard with one of preponderance of the evidence.

•    Removal of the requirement that a complainant establish registrant bad faith

•    Establishing a “loser pays” regime

•    Permanently barring individuals or entities who had lost five URS actions from mounting any defense in future actions against them

•    Reducing the post-decision appeals period from 2 years to six months

•    Expanding the availability of URS actions to “trademark + keyword” cases

Retaining these provisions is crucial if the URS is to afford adequate due process rights to registrants in new gTLDs. As you ably noted during the Brussels meeting, all of the current URS provisions on these matters represent the negotiated community consensus facilitated by the STI-RT. Further, as we have previously noted, many (such as “loser pays”) were either explicitly rejected by the IRT or have never previously been on the negotiating table.

While the general aim of the ongoing discussions is to resolve differences between the Board and GAC, and while we have no desire or intent to add delay to the Guidebook approval process, we nonetheless strongly urge the Board to remain resolute and not cede ground to the GAC on the above listed issues.

However, we are very concerned that the Board has accepted the principle that a rights owner prevailing in a URS has first option to obtain a suspended domain at the conclusion of its registration period. This position is at odds with the IRT’s vision of the URS as a supplement to, and not a substitute for, a UDRP action – that a successful URS action would lead to domain suspension, while domain transfer would remain the exclusive province of the UDRP. Given the far lower cost and faster speed of the URS, and its lessened registrant notice period and rights, we are afraid that many trademark owners will choose to utilize it rather than the UDRP in attempts to obtain domains for their own portfolio. The only significant difference between prevailing in a URS versus a UDRP action is the different evidentiary standard – but, as Chairman Thrush noted on Wednesday morning, it is only “slightly higher” and may well be outweighed for complainants by the URS’ cost and speed advantages. We are also concerned that the availability of domain transfer via the URS will undermine the UDRP reform effort that was recently initiated by the GNSO.

In the alternative, we would suggest that a domain suspended via URS decision simply be placed on a list of domains permanently ineligible for re-registration. Doing so would be entirely consistent with the original aim of having the URS available only for “slam dunk” cases of abuse, as such domains would be unlikely to survive future URS challenges. We believe that such a list would be readily implementable by registrars.

This alternative would have multiple advantages:

•    It would assure rights holders that they will not have to bring additional URS actions each time a suspended domain drops back into the secondary market (this being the primary rationale for giving first option on domain acquisition).

•    It would permanently relieve rights holders of paying perpetual registration costs for unwanted domains being held in portfolio simply to prevent their abuse.

•    It would protect innocent registrants from inadvertently purchasing a domain previously subject to adverse URS action so that they do not waste development time and money only to subsequently lose it.

•    It would assure all registrants that the URS will not be abused as a UDRP substitute.

•    It would enhance the economic prospects of new gTLDs because potential registrants will not be concerned that a new and untested URS mechanism will be employed to hijack their domains.

•    It would assure that the GNSO’s ongoing UDRP reform effort is meaningful by preserving domain transfer as a remedy exclusively available via a UDRP action.

In sum, we believe that this suggestion is a “win-win, squared” for all concerned parties that also preserves the original intent that the URS be a UDRP supplement, not a substitute.

Conclusion

We hope you find these views useful as you continue to engage with the GAC with the aim of resolving remaining differences and opening the application window for new gTLDs. In particular, we would hope for quick clarification regarding whether any third party counsel are to be invited to participate as experts during Board/GAC teleconferences on IP issues.

Sincerely,
Philip S. Corwin
Counsel, Internet Commerce Association

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