Has ICANN’s Board assigned its policy-making GNSO Council an impossible task in directing it to attempt to reach consensus on alternatives to the staff “assimilation” of the IRT recommendations regarding the Uniform Rapid Suspension (URS) and Trademark Clearinghouse proposals? (See https://www.internetcommerce.org/ICANN_Requests_GNSO_Feedback for background on that request.) That question was grappled with at length during an all-day meeting of the Council held in Seoul on Saturday, October 24th. Attendees noted that only six weeks remained until the December 14th due date, and that as a practical matter the GNSO had only five weeks to complete its work as at least a week would be required for various stakeholder groups and constituencies to review and vote on any final draft recommendations.
The procedural path tentatively decided upon by the Council is reflected in the draft resolution reproduced below. Essentially, a 15 member Specific Trademark Issues Drafting Team (STI-DT) would be established, with its membership constituted as follows:
• Four from the commercial stakeholder group (the CSG includes the Business Constituency that ICA and several individual domainers are part of – we plan to press hard for a seat within this group but as of now there is no guarantee that domainers’ viewpoint will receive any official recognition)
• Four from the non-commercial stakeholder group
• Two each from the registry and registrar constituencies
• Two from the at-large constituency
• One from the nominating committee
Under the draft resolution, these separate groups would have until just November 4th, the week after the end of the Seoul ICANN meeting, to provide their initial positions on the URS and TM Clearinghouse – and on the basis of those positions the GNSO will determine whether there is a possibility of going forward to reach a consensus position to forward to the Board. If consensus appears feasible, there will be just four remaining weeks to hammer out detailed alternatives.
ICANN staff has prepared a draft side-by-side comparison of the differences between the IRT recommendations and Version 3 of the Draft Applicant Guidebook. While the URS is now proposed to be an optional “best practice” rather than a mandatory feature of every new registry, we believe that in reality every applicant will elect to utilize it, whatever its final form– how would any applicant justify to its Board or investor group foregoing a feature that would forfeit a critical evaluation point in the review of an application carrying a $185,000 application fee, especially when the absence of the URS might open up the registry itself to future litigation brought by trademark interests?
Not mentioned in the side-by-side, but of even greater import to registrants, is that the “optional” version of the URS proposed by ICANN staff appears to make it even easier for complainants to succeed in suspending a given domain for the remainder of its registration period. The original version of the URS would have required a complainant to prove all three of the elements that must be established in a UDRP action under a supposedly higher standard of clear and convincing evidence. But the staff version would only require the complainant to demonstrate that the domain name was identical or confusingly similar to its registered trademark and that the registrant had no legitimate right or interest in the domain name AND/OR the domain was registered or being used in bad faith. In short, while the UDRP is a 3-part test, the URS is now proposed to be a 2-part test. This unexplained change, along with the far lower cost of initiating a URS action, heightens our concern that the URS will displace the UDRP in large measure and that this will lead to a considerable escalation in complaints brought against registrants. And, the staff document proposing this URS variant suggests that the URS is “essentially an interim implementation solution” and that the GNSO “may adopt this or a similar system for use by all registries” – by which they mean .com and the other incumbent gTLDs.
ICA will remain fully engaged on this critical matter in Seoul and afterwards, as registrants who believe that the UDRP is already skewed against them can only regard the proposed URS as fraught with far greater danger to their financial and labor investments as well as their due process rights.
WHEREAS, the ICANN Board has requested that the GNSO evaluate certain ICANN staff implementation proposals for the protection of trademarks in new gTLDs based in part on the recommendations from the IRT, public comments, and additional analysis undertaken by ICANN Staff, as described in the letter dated 12 October 2009 <<Letter from Rod Beckstrom & Peter Dengate Thrush to GNSO Council>>.
WHEREAS, the ICANN Board letter requests the GNSO’s view by December 14, 2009 on whether certain rights protection mechanisms for second level strings recommended by ICANN Staff based on public input are consistent with the GNSO’s proposed policy on the introduction of new gTLDs, and are the appropriate and effective options for achieving the GNSO’s stated principles and objectives;
WHEREAS, the GNSO has reviewed the ICANN Board letter and desires to approve the procedures for conducting such evaluation;
NOW THEREFORE BE IT RESOLVED that the GNSO adopts the following process to conduct the evaluation requested by the Board:
1. A GNSO Review Team will be comprised of representatives designated as follows: the Registrar and Registry Stakeholder Groups with two (2) representatives each, the Commercial Stakeholder Groups and the Non-Commercial Stakeholder Groups with four (4) representatives each, and At-Large with two (2) representatives and one representative from the Nominating Committee Appointees(1);
2. Each of the Stakeholder Groups will solicit from their members their initial position statements on the questions and issues raised by the ICANN Board letter and the ICANN Staff proposed models for the implementation of the Trademark Clearinghouse and Uniform Rapid Suspension model, and will deliver their initial position statements on November 4, and with final position statements to be delivered by November 6, 2009;
3. Such position statements will be summarized by ICANN Staff and distributed to the GNSO Review Team to evaluate whether a consensus can be reached on the ICANN Staff implementation models or other proposals for the protection of trademarks in the New gTLD Program; and
The GNSO Review Team will conduct its analysis, identify those areas where consensus has already been reached, an seek to develop consensus on those issues for which consensus could not be determined. The GNSO Review Team will provide a final report to the GNSO on or before the GNSO council’s meeting in late November, 2009.