In a historic June 20th vote of thirteen yays to two nays, with two abstentions, ICANN’s Board of Directors voted in Singapore to approve the opening of the domain name system (DNS) to unlimited applications for new generic top level domains (gTLDs). The application period for the initial round will open on January 12, 2012 and close three months later on April 12th. The results of initial evaluations will start to be published in November and the first new gTLDs be added to the DNS in late 2012 or the first quarter of 2013.
While firmly opposed to intentional cybersquatting and other willful abuses of domain registration and use, ICA has been an outspoken advocate throughout the Applicant Guidebook (AG) development of maintaining a reasonable balance between the rights of companies and individuals controlling the two relevant types of valuable intangible assets – trademarks and domain names. In addition, as the AG has evolved, ICA has fought to maintain critical distinctions between the Uniform Dispute Resolution Policy (UDRP) applicable to both incumbent and new gTLDs, and the Uniform Rapid Suspension (URS) process developed for new gTLDs. While initially proposed by trademark interests as a supplement to the UDRP to provide a lower cost, faster means of suspending domains that constitute “slam dunk” cases of trademark infringement, those same interests have worked throughout the AG development process to broaden the scope of domain disputes subject to the URS while lowering a complainant’s burden of proof. When they failed to achieve those goals through the front door of ICANN’s multi-stakeholder consensus policy development process, they turned to the back door approach of lobbying the Governmental Advisory Committee (GAC) and succeeded in convincing some of its members to become assertive advocates for the most extreme IP positions.
We are happy to say that ICANN’s Board held the line against the most damaging demands. In particular, during their June 19th meeting with the GAC, they again rebuffed the proposal that the URS burden of proof standard be reduced from “clear and convincing evidence” to the “preponderance of evidence” requirement for UDRP actions. Additionally, while the Board had initially agreed in February to the GAC demand that a URS complainant have first option to acquire a suspended domain, the final AG contains no such transfer option after a concerted outcry by ICA and other participants in ICANN’s March meeting in San Francisco. Maintaining these key differences means that URS will indeed be a supplement to, and not a substitute for, the UDRP.
This is not to say that we are entirely happy with the AG provisions of greatest relevance to registrants. The URS provides registrants with an inadequately brief response period and an indistinct standard for its good faith extension. And it remains to be seen – and we are highly skeptical – that a $300 per complaint (not domains) process can provide any kind of credible due process. The threshold for a “loser pays” requirement was lowered from 26 to 15 domains in a single URS proceeding. And we continue to remain disturbed about an inflexible “three strikes” standard that disqualifies individuals and entities from participating in a new gTLD bid if they have lost that number of UDRP cases – regardless of whether they own ten domains or ten thousand – but the final policy defers to final adjudication, meaning that a UDRP loss will not be counted if reversed on court appeal.
Another critical aspect of the Board Resolution adopted in Singapore is a bifurcation of vertical integration policy for companies that operate incumbent gTLD registries. So, for example, if VeriSign wants to apply for a new gTLD a process will be established to consider any accompanying application for that new registry to affiliate with a registrar. But, at least for the present, .Com and .Net will not be permitted to affiliate with a registrar pending further consultations with competition authorities in the US, EU, and other key jurisdictions. We hope this will at least temporarily quell suggestions from IP interests that any incumbent registry entering into such an affiliation – or even renewing its operational contract with ICANN – be required to adopt URS. In fact, given that the first new gTLD will probably come online around the start of 2013, and that the URS is totally untested, ICA’s believes that no discussion of applying URS to incumbent gTLDs should even be initiated until we have several years’ worth of experience with its operation at new gTLDs.
While the new gTLD application process has now been approved, the transition from development to implementation – from theory to practice – will be tremendously demanding. Unanticipated issues and concerns will undoubtedly arise, and we would not be surprised to see continued pressure from IP interests and some GAC members to further diminish registrant rights in both new and incumbent gTLDs. ICA will remain vigilant and vocal in the days ahead on its members’ behalf, while also monitoring implementation of the URS as well as the Trademark Clearinghouse and Claims Service established for new gTLDs.
But today we congratulate ICANN’s Board and staff – and the entire ICANN community that contributed countless hours to the effort — for completing this stage of a complex and challenging process. We expect that some new gTLDs will be surprising successes while others will barely achieve liftoff.
And, while the domain investment and development community has voiced a broad diversity of views about the wisdom and prospects of the program, we expect that many ICA members will be involved in this next stage of the Internet’s developments as advisers, investors, and professional registrants. As for ICA, its issues and initiatives will undoubtedly evolve in tandem with the coming expansion of the DNS.