On November 30th ICA filed its comment letter regarding the “Preliminary Issue Report on a GNSO Policy Development Process to Review All Rights Protection Mechanisms in All gTLDs” that was published for public comment on October 9, 2015. ICA’s complete comment can be viewed at http://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/msg00021.html, and all 24 filed comments are available at http://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/index.html.
The principal question raised by the Report was whether the review and possible adjustment of new gTLD RPMs and the review and potential reform of the UDRP should be combined or separated. On that key decision, our comment letter said that the RPMs should be addressed prior to the UDRP review for these reasons:
We believe that the RPM review and the UDRP review each constitutes a highly complex array of interrelated questions and judgments, and that trying to combine the two into a single mega-review will tax any Working Group (WG) inordinately.
In particular, the UDRP review will constitute the first comprehensive inquiry into ICANN’s oldest Consensus Policy. It may address structural issues; such as whether ICANN should enter into uniform contractual agreements with all UDRP providers, whether there should be clear boundaries to prevent individual dispute providers’ Supplementary Rules from influencing decisional outcomes, and whether an internal appeals procedure should provide an avenue for a ‘UDRP Supreme Court’ to address and reconcile disparate decisions by different providers on nearly identical fact patterns.
…Both domain registrants and trademark owner complainants deserve, after nearly two decades of unexamined use, a UDRP review and reform process that is accorded adequate time for comprehensive review and development of subsequent recommendations. This review of necessity must be preceded by the RPM review, as it was the intent of the GNSO Council in 2011 that the UDRP review be informed by that of the RPMs and by any changes made to them. Further, as staff notes at page 8 of the Report, one result of “this approach is the fact that community consideration of the more general overarching issue concerning the comprehensiveness of all the RPMs as a set of aggregate protections for trademark holders in all gTLDs, as well as the issue of whether any of the new RPMs should be considered Consensus Policies like the UDRP, will necessarily be postponed to the second phase of work”. Unlike staff, we do not view that consideration as a drawback but as a far more responsible approach than considering integration of any of the new gTLD RPMs in legacy gTLD without knowing whether or in what manner they may be altered.
We agree with staff that “One benefit of this two-pronged approach is better alignment of the timing of the work on reviewing the new RPMs with the operational reviews of the New gTLD Program (including the CCT Review) and, conceivably, a new PDP on New gTLD Subsequent Procedures”. We fully expect that there will be substantial interest in completing the RPM review prior to the opening of any second round of new gTLDs, and that consideration provides another reason for structural separation. If the RPM and UDRP reviews were addressed together, substantial pressure could arise to truncate the UDRP portion lest it delay the timing and adoption of final RPM recommendations. As a result this first-ever UDRP review could get short shrift and inadequate attention.
Many of the other groups and individuals who filed comments also took the view that the RPM and UDRP reviews should be separate, with the RPMs teed up first.
What did surprise us was the reluctance of the trademark community to even contemplate a review of the UDRP, much less consider any changes based on nearly twenty years of experience with it.
The International Trademark Association (INTA) asserted that it is “is strongly opposed to opening the Uniform Dispute Resolution Policy (UDRP) to review as the UDRP has been functioning efficiently and well for over fifteen years. It is important to maintain this effective mechanism which combats the most blatant instances of cybersquatting within the domain name system. Any review or subsequent modifications could jeopardize the benefits that the UDRP is intended to provide to trademark owners.” Having attended INTA conferences along with thousands of others, and seen the money invested in global branding as well as the sector’s political influence, it strains credulity to believe that trademark owners could be “rolled’ in the course of a UDRP review.
ICANN’s Intellectual Property Constituency (IPC) warned “that the complexity of any review would be immense and the drain on resources considerable, with a risk of creating new problems via an overly complicated review process… the IPC has a serious concern that if a review were to be carried out, there is a risk of a polarization of views into two camps – each with a fear that the other camp would either dilute or overly strengthen the UDRP. Improvements sought by one side would be seen as potentially abusive to registrants, improvements sought by the other as potentially diluting the effectiveness of a mechanism for resolving disputes efficiently… if a review of the UDRP as a policy is to be considered, an “Expert Group” should be assembled to carry out this review.” For ICA’s part, we think that, just like war is too important to just be left to the generals, UDRP review and reform is too important to just be left to “experts” and must include participation by those with broader views of the UDRP’s impact on domain registrants and free expression, among other key considerations.
And UN agency and accredited UDRP provider the World Intellectual Property Organization (WIPO) opined that “the UDRP continues to function as intended. In its harmonized criteria and universal application, this anti-cybersquatting mechanism has come to be recognized as an international policy success… Destabilization of the predictable UDRP framework may have a range of unintended consequences. It would disrupt the body of precedent carefully developed by hundreds of panelists from across jurisdictions in tens of thousands of cases… Each day, the UDRP demonstrates the flexibility to meet the demands of an evolving DNS; it does not need system-wide updates that would imprudently limit this flexibility”. To the contrary, domain investors would respond that this “flexibility” is code for a lack of any binding precedent that makes the UDRP more of a casino game in a world of proliferating UDRP providers.
We are pleased that ICANN’s Business Constituency, of which ICA is a member, took a more balanced approach, stating, “While the BC believes that the UDRP is working well overall, it now seems timely to engage in a review of its performance with an eye toward considering possible improvements, so long as that UDRP review commences after completion of the RPM review.”
In response to the trademark community’s message of opposition and excessive caution, ICA added this final point to our comment’s Executive Summary, to wit:
Finally, we have strong disagreement with the view expressed by a minority of commenters that the UDRP review anticipated by the GNSO Council’s Resolution of December 15, 2011 should not proceed at all, and that any such undertaking would be unduly arduous and dangerous. The UDRP is the only ICANN Consensus Policy that has never been reviewed. Like any human undertaking, it is not perfect and was drafted by individuals who could not have known how it would be implemented in practice. Any UDRP review should of course be fully informed by the actual record of UDRP practice and experience of participants, and should proceed carefully. But we are confident that a good faith UDRP review that considers the legitimate rights and interests of both registrants and complainants, as well as related public policy issues, can produce a more balanced and consistent system that preserves the fundamental virtues of the UDRP while yielding modifications that benefit all affected parties.
ICA looks forward to participating in both the RPM and UDRP reviews. ICANN staff is scheduled to deliver a Report summarizing comments and suggesting next steps by December 10th. Following receipt of that report, the GNSO Council will decide on a way forward and, if ICA’s and other commenters’ proposed procedure is followed, will consider a draft Charter for an RPM review working group in the initial months of 2016.
Throughout the coming review processes, ICA will be an active participant seeking to protect the legitimate rights and interests of domain investors and developers and to bring greater balance between trademark and domain rights.
Here’s the rest of our comment letter’s Executive Summary:
It was an omen of things to come. Just over an hour out from Hong Kong the pilot of my 777 en route from San Francisco came on the intercom. Hong Kong was temporarily closed due to torrential rain and we would need to land in Taipei to refuel before proceeding.
When we finally arrived in HKG my journey from Washington, DC was already close to 24 hours’ duration. I cleared immigration, collected my bags, and met the driver of my hotel-dispatched Mercedes. En route the downpour began again, in sweeping waves that the locals call “black rain”. I have no idea how my driver saw the road as the wipers engaged in a futile battle with the deluge. I never spoke to him during the ride except to say “thank you” when we finally arrived at the Sheraton in Kowloon, afraid that distracting him for even a moment could have fatal consequences.
That black rain would become a metaphor for the coming deluge of Internet-related trademark law and policy proposals that could arrive as a vast storm front in the next two years. The trademark community is readying an ark to ride out the flood, and the domain investment industry must do so as well.
The Sheraton was situated directly across Hong Kong harbor from the massive Convention Center housing the annual meeting of the International Trademark Association (INTA) from May 11-14. I was attending it in my new capacity as a member of INTA’s Internet Committee, which wrestles with the intersection of trademark protection and cyberspace, as well as its Subcommittee on Internet Governance. On the first morning of the meeting I made the mistake of walking the two blocks from hotel to the Star Ferry terminal to catch the 5-minute, two-and-a half Hong Kong dollar (33 cents U.S.) ride across to the Convention Center. During rainy season Hong Kong is akin to a giant steam bath, a mass of humanity in a cloud of humidity. I sweated through my shirt and suit on that stroll and for the rest of the stay took a taxi those two blocks to avoid a repeat of that.
Inside the cavernous convention hall, where walking from one end to the other took ten minutes at a brisk pace, it became clear how huge the world of branding is in the 21st century. Thousands were in attendance from every corner of the globe, and more than one hundred exhibitors filled a space of several acres.
While those exhibitors included booths from a variety of incumbent and new gTLD registries, registrars, and a large number of online brand protection providers, it’s no secret that the trademark world has been less than enthusiastic about ICANN’s new gTLD program — concerned about the potential for vastly expanded cybersquatting and unnecessarily draining costs for legal actions and defensive registrations. So now that the program was off the launch pad I wanted to see how the trademark sector was viewing and reacting to it.
The first feedback came at a small “Table Talk” luncheon discussion of domain name litigation and arbitration attorneys and consultants involved in the new world of 1,000-plus gTLDs. These was an informal, unofficial conversation that allow INTA members to discuss subjects among themselves. It became clear that many of the trademark experts in attendance were just beginning to focus on the new gTLD program, despite clear notice of its impending arrival and the availability of new rights protection mechanisms (RPMs) consisting of the Trademark Clearinghouse (TMCH) and Uniform Rapid Suspension (URS). Those more conversant with it were concerned by a variety of registry and registrar practices that they thought were undermining their ability to make defensive registrations at reasonable cost.
Anecdotal reports also indicated that much of the intentional cybersquatting was being done by amateurs with no understanding of trademark law — one domain industry attorney related, laughingly, how he had been asked to help broker the sale of a newly registered infringing domain to its major brand rights holder for a contingency fee, and how he had advised the registrant to just transfer the name now before he was hit with a cease-and-desist letter or worse. A major concern of discussants was whether a rights holder had to take action against every infringing domain, no matter how slight the impact, to demonstrate active policing of its rights, to protect their mark through active policing; the moderator suggested that a memo to file explaining why action had been declined might suffice, but noted that there is no way to tell how courts would treat such decisions in the context of new gTLDs.
More information came at a large general session on trademarks and new gTLDs. As of that date (May 12):
Session speakers conveyed anecdotal reports of substantial levels of cybersquatting. Many rights holders appeared to be passing on TMCH registrations because they had little interest in making large numbers of defensive “sunrise” registrations at new gTLDs. Complaints were heard that the URS was unattractive because it involved perpetual monitoring of suspended domains that could later be re-registered, and that the UDRP was too slow and expensive to scale to the new world. Session attendees were reminded that ICANN would be conducting an initial review of the efficacy of the new RPMs in 2015, and that review of the UDRP would also commence next year – and were urged to document how they used the new RPMs and what their total defensive costs stemming from new gTLDs added up to.
At the meeting of the Internet Governance Subcommittee I was asked to head up a new task force to analyze ICANN’s proposal for the process to develop enhanced accountability measures to accompany the transition of the IANA functions from the US government to the multistakeholder community. This followed up on performing the same lead role regarding the IANA transition process, which resulted in submission of an INTA comment letter.
Both domain investors and rights holders appear to share similar concerns about the prospect of a termination of the remaining U.S. role absent the establishment of enhanced and enforceable accountability measures.
At the full Internet Committee I reported on the state of play of that transition and accountability process, including the key elements of ICANN’s initial proposal as well as recent Congressional oversight hearings. At that meeting I also learned more about the use of RPMs against new gTLDs. Many domain registrations that had infringement potential could not yet be the target of a URS or UDRP action because the suspect domains were still “dark” with no content, and hence bad faith use could not be alleged or proven. Overall, only 5 UDRPs had been filed against new gTLDs, so for now the URS appears to be the favored arbitration response.
I also learned at the Internet Committee meeting that the trademark community was readying itself for the major trademark law and policy debates that are likely to arise in the 2015-16 timeframe.
The likely policy issues include:
The Committee was also getting ready to react if other parties should propose legislation related to Internet fraud, or an international treaty on cybersquatting.
I left Hong Kong with a suitcase full of business wear in need of dry cleaning – and with a much better understanding of what trademark owners are thinking about new gTLDs. While .brand gTLDs and certain new gTLD vertical categories may enhance their web presence and marketing/sales strategies, monitoring and enforcement costs are a growing concern. Even if a global brand can keep its total URS costs down to $1,000 an action for filing fees and counsel, that can readily add up to a $1 million cost per mark across the new gTLD landscape.
Hopefully, my engagement on the Internet Committee, as well as that of other domain sector attorneys, can help to bridge the understanding gap between rights holders and domainers and deliver the message that the professional domain portfolio investors represented by ICA are not cybersquatters. (That point was driven home two weeks later when I attended the TRAFFIC domain conference in Las Vegas, where major investors related their own tales of being approached by cybersquatters attempting to sell newly registered and clearly infringing gTLDs — and of telling them to get lost).
It’s prudent for the trademark sector to be gearing up for the coming Internet trademark policy debates, and it would be imprudent for the domain industry to fail to do the same. The domain community respects the measured enforcement of trademark law, and asks in return that the trademark sector recognize that domains are also valuable intangible assets — and that a reasonable balance must be established to reconcile the separate bundles of rights within trademarks and domains. ICA will be delivering that message and readying its own strategy as the debates approach.
And there are many areas where a candid dialogue may produce win-win results. Trademark owners are justifiably chagrined that a URS action only suspends a clearly infringing domain for its remaining registration period, leaving it available for re-registration and the need for a follow-up URS filing — while domain investors don’t want a domain transfer option out of equally justifiable concern that the URS could become a low-cost means of reverse domain name hijacking (RDNH). One possible reconciliation would be to amend the URS so that a lost domain is permanently barred from being reregistered. That would alleviate domainers of their hijacking concern – and take a clearly infringing domain out of circulation with no continuing defensive registration costs for the rights holder.
When it comes to UDRP reform, ICA members have discussed a variety of changes they would like to see come about, and those can be the basis for future negotiations. As for amending the ACPA, we’ll have to see what is proposed – creating secondary liability would concern the entire domain industry far beyond professional investors, including registrars and secondary markets, while a “loser pays” rule would also be of significant concern. (While there is no current indication that those items will be on any INTA wish list, they have already been floated by the DC-based Coalition Against Domain Name Abuse (CADNA)).
How these debates will play out is far from certain. But that they will soon be engaged in is absolutely certain. So everyone with a stake in the future of Internet trademark law and domain investment needs to gear up and be ready to make their case – or else be swept away by coming torrents of policy black rain.