UDRP

19
Jan

ICA Session at Namescon: The Most Shocking UDRP Decisions of 2016

On Monday, January 23, 2017, at noon, the ICA will be holding a special session at NamesCon, to debate and select the most shocking UDRP decision of 2016. The three cases up for debate are Sihi.com, NutrihealthSystems.com and GreenTrust.com.  Summaries of the cases are set out below.  After the cases are presented and debated, the audience at the session will select the case that deserves the title of “Most Shocking”.

Namescon Case Summaries Jan 17

1
Feb

Final RPM Report Follows ICA Comment and Sets Stage for UDRP Review

Domain registrants have long voiced their desire for a comprehensive review and subsequent reforms of the Uniform Dispute Resolution Policy (UDRP). That goal is now in sight, and is set to proceed in the manner recommended to ICANN by ICA.

On January 11, 2016 ICANN policy staff submitted to the GNSO Council the “Final Issue Report on a Policy Development Process to Review All Rights Protection Mechanisms in All Generic Top-Level Domains”. That Final Report is culmination of a public comment process that started last October, in which ICA actively participated, considering how a review of the rights protection mechanisms (RPMs) for the new gTLD program should be related to an unprecedented review of the UDRP, the only ICANN Consensus Policy that has never been subjected to scrutiny since its creation. Domain registrants desiring a balanced approach to their rights versus those of trademark owners have a big stake in both reviews. RPMs should recognize and protect the rights of both domains and trademarks.

In its December 1st comment letter, ICA stated its preference for a sequential review process:

ICA prefers a separate and sequential approach for the reviews and subsequent reports and recommendations, with the RPM review preceding and thereby informing the UDRP review.

ICA further explained its practical and policy reasons for that preferred two-part approach:

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….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.

That ICA suggestion was essentially adopted by ICANN staff. In this regard, the Final Report suggests the following procedure:

Following review of community feedback received regarding the three options for a RPM review that were presented in the Preliminary Issue Report for public comment, ICANN staff recommends that the GNSO Council launch a PDP in accordance with what was presented as the third option in the Preliminary Issue Report: namely, to conduct a policy review of all the RPMs in two phases. The initial phase would focus on a review only of the RPMs developed for the New gTLD Program, and the second phase would focus on a review of the UDRP. The second phase may also include any issues identified during the first phase of the PDP that are more appropriately considered during the second phase. Cumulatively, the results of both phases of the PDP would be a full review of all RPMs developed to date for all gTLDs….Staff recommends that the work in the initial phase of the RPM PDP be performed by a standalone PDP Working Group that liaises with the recently launched PDP Working Group on New gTLD Subsequent Procedures as there may be overlapping issues arising during the work of both groups that would warrant careful coordination. Staff does not recommend folding in a review of the RPMs that were developed for the New gTLD Program into the scope of work for the New gTLD Subsequent Procedures PDP due to the likely complexity and size of that PDP….Staff also recommends that, upon completion of Phase One, the PDP Working Group submits a First Initial Report to the GNSO Council that is also published for public comment….The second, subsequent phase of work in the RPM PDP would be a review of the UDRP, ideally carried out by the same PDP Working Group….Staff believes that a benefit of this two-phased approach is a better alignment of the timing of the work on reviewing the New gTLD Program RPMs with the operational reviews of the New gTLD Program17 (including the CCT Review) and the PDP on New gTLD Subsequent Procedures. (Emphasis added)

The GNSO Council has already proceeded in harmony with that suggested approach. During its meeting of January 21st, Council adopted a Charter for The New gTLD Subsequent Procedures PDP Working Group that specifically prohibits it from addressing the RPMs, stating:

Second-Level Rights Protection Mechanisms: Proposing recommendations directly related to RPMs is beyond the remit of this PDP. There is an anticipated PDP on the “current state of all rights protection mechanisms (RPMs) implemented for both existing and new gTLDs, including but not limited to the UDRP and the URS…”. Duplication or conflicting work between the New gTLD Subsequent Procedures PDP and the PDP on RPMs must be avoided. If topics related to RPMs are uncovered and discussed in the deliberations of this PDP, those topics should be relayed to the PDP on RPMs for resolution. To assure effective coordination between the two groups, a community liaison, who is a member of both Groups, is to be appointed jointly by both Groups and confirmed by the GNSO Council. (Emphasis added)

That means that review of all the new gTLD RPMs—the Trademark Clearinghouse (TMCH) and related Sunrise and Trademark Claims service periods; Uniform Rapid Suspension System (URS); and Post-Delegation Dispute Resolution Procedures (PDDRPs) — should be the sole preserve of a new Working Group (WG) on all RPMs in all gTLDs. Following that review, it will proceed to review the UDRP and consider whether it should be reformed.

The GNSO Council will likely take up a Motion to establish that RPM WG, as well as adopt its Charter, at its next meeting scheduled to take place on February 18th.

Once Council takes that next step, ICA intends to fully engage in the review of the new gTLD RPMs and, of course, the UDRP review. ICA will advocate an approach that, while fully respecting the legitimate rights of trademark owners, brings greater balance to the exercise of all the RPMs and that helps to make the application of the UDRP a more consistent and predictable process in the future. We will of course keep our members comprehensively informed as the reviews proceed, and will solicit their feedback and guidance as critical questions emerge.

 

 

14
Dec

Initial Statement of the Internet Commerce Association Regarding the Camilla.Com UDRP Decision

Washington, DC; December 11, 2015 —

The Internet Commerce Association today released the following initial statement in regard to the November 30 decision of the WIPO Administrative Panel in the case of Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC (Case No. D2015-1593; http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1593):

The egregious three-member panel decision in this Uniform Domain-Name Dispute-Resolution Policy (UDRP) dispute departs substantially from prevailing UDRP practice and relies on criteria inconsistent with those set forth in the UDRP as adopted by ICANN.  This decision demonstrates once again that review and reform of the UDRP by ICANN is an urgent priority.

“The panelists on the Camilla.com dispute disregarded 15 years of UDRP practice, rewrote and distorted the Policy, and set an impossible standard for domain registrants to meet to avoid the loss of their valuable generic domains” said ICA Board member Nat Cohen, President of Telepathy Inc.  “If this decision stands and guides panelists in other future cases, it would undermine the rights of millions of domain owners, undercut much of the domain industry, and would encourage further abuse of the UDRP system”, added Cohen.

The decision states that “the Panel accepts that the Respondent did not and could not reasonably have known of the Complainant’s trademark when it registered the disputed domain name in May 2009”. Based on prevailing and proper UDRP practice, that should have ended the analysis; the Respondent clearly could not have had bad faith intent when it registered the domain. Indeed, in ICA’s view, at that point the Panel would have had clear grounds to cite the Complainant for attempted reverse domain name hijacking. Complainant received its Australian trademark more than two years after the U.S.-based Respondent registered the domain, and only has a pending “intent to use” application for a U.S. trademark.

Instead, the panelists created new and unprecedented duties for registrants, proclaiming that a “registrant of domain names that adopts a PPC revenue model must ensure that after registration the disputed domain name is not used in a deceptive or confusing manner with new or developing trademarks” and a “registrant of domain names from the moment of acquisition must be prepared to take necessary steps to ensure that the PPC links generated by algorithm do not infringe existing trademarks, or any trademarks that may emerge in future”. (Emphasis added.) The panel’s decision would place a burden on domain registrants of generic words to monitor ongoing trademark registrations in every nation in the world. It would also require them to influence the proprietary ad placement algorithms of Yahoo!, Google, and other major online ad providers. Both of these new responsibilities are nowhere to be found in the UDRP rules and are impossible to meet.

The Camilla decision overthrows an important balance between trademark and domain registrant rights and provides a blueprint for any future trademark registrant to steal valuable generic domains without paying market value by simply initiating a UDRP action.

“While ICA respects trademark rights, the UDRP cannot be allowed to become a vehicle for legitimizing domain theft,” said Cohen.

The decision of whether to appeal this UDRP decision lies with the registrant. ICA believes that this decision should be overturned under the U.S. Anticybersquatting Consumer Protection Act (ACPA). If an appeal is filed, ICA will give full consideration to providing support to help persuade the court that the panel’s finding of bad faith registration and use is contrary to U.S. law.

ICA and its Counsel and legal advisory group are continuing to review the decision and may issue a further statement once that review is completed.

1
Dec

ICA Tells ICANN That Comprehensive UDRP Review Should Follow RPM Analysis

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:

Executive Summary

  • ICA prefers a separate and sequential approach for the reviews and subsequent reports and recommendations, with the RPM review preceding and thereby informing the UDRP review.
  • ICA reiterates all of the points made and views expressed in our prior RPM comment letter of April 30, 2015.
  • ICA believes that the URS has been largely effective in achieving its intended goals. We would strongly oppose any alterations that could make it a substitute for, rather than a narrow supplement to, the UDRP. In addition, the initiation of a PDP to determine whether the URS and other new gTLD RPMs should become Consensus Policies for all gTLDs, and the full consideration of the multiple transitional issues accompanying any such decision, illustrates again that the decision of GDD staff to seek imposition of the URS in contract renewal negotiations with legacy gTLDs was a direct and impermissible intrusion into the policy realm reserved to GNSO Council by ICANN’s Bylaws. ICANN’s Board should therefore instruct GDD staff to cease and desist from any such attempts during the time that these PDPs are open and active, and should refuse to approve any legacy gTLD renewal contract that contains any provision of new gTLD RPMs.
  • The language of Trademark Claims notices may deter legitimate noninfringing domain registrations at new gTLDs. This situation can be partly but not completely addressed by providing more comprehensive information in the notice to the prospective registrant, and also clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes.
  • Labels that generate a Trademark Claims notice should not be expanded beyond the present system of exact matches of the trademark, plus domain labels recovered in UDRP or court actions under the ‘Trademark-plus-fifty’ implementation measure.
  • The right of first refusal for a premium domain name during or after the sunrise period should be conditioned on whether the trademark is unique or a dictionary word, and if a dictionary word whether the gTLD label is related to the goods and services for which it is registered.
  • Our responses to the report’s UDRP questions emphasize the need for a mechanism, perhaps via an optional internal appeal, to establish greater predictability and consistency in decisions dealing with similar facts; better protection for free speech, especially legitimate noncommercial criticism; more equitable time periods for respondents to choose counsel and draft answers; a fairer means of allocating cases among UDRP providers and their panelists; and establishment of a uniform laches policy barring complaints in defined circumstances.
  • Our additional comments on the UDRP address the need for clear guidelines and meaningful penalties to determine and deter attempted Reverse Domain Name Hijacking; greater transparency requirements for UDRP providers; and establishment of an ICANN-maintained centralized database of UDRP decisions and other relevant information.

 

15
Jun

Electronic Frontier Foundation tells ICANN to Delete URS from .Travel

The Electronic Frontier Foundation (EFF) has just told ICANN to drop the notion of applying the Uniform Rapid Suspension (URS) dispute resolution system to .Travel and other legacy gTLDs without undertaking a full Policy Development Process (PDP).

In a June 12 letter, EFF stated:

ICANN should not apply URS to the .travel domain, or to any additional domains, by the unaccountable means of staff inserting new conditions into the renewal of the registry operator’s contract. Rather, the public policy implications of such a move demand that a full PDP be undertaken first.

EFF’s letter also states:

The introduction of the URS, in response to a 2009 recommendation from the new gTLD program’s Implementation Recommendation Team (IRT), was characterized (however dubiously) as an implementation detail of the new gTLD program…The URS never became a consensus policy that would be applicable across all gTLDs…If the URS is to be extended to legacy domains such as .travel, this would place many further domains at risk of rapid suspension, which raises significant free speech concerns. It would also set a bad precedent for the extension of the URS to other legacy domains such as .com, .net and .org as their registries’ contracts come up for renewal.

ICANN contracting staff decided to impose the URS on .Travel based upon the misguided notion that it was more important “to increase the consistency of registry agreements across all gTLDs” than to act consistently with ICANN’s Bylaws. They didn’t even wait for their colleagues in the policy department to deliver the ‘Issues Report on new gTLD RPMs’ to the GNSO Council this coming September. One of the reasons the GNSO Council requested that report was so the GNSO could decide if those RPMs should become Consensus Policy for all gTLDs.

And it’s not just .Travel targeted by this staff power grab. Two weeks after publishing that proposed Registry Agreement (RA) ICANN published the proposed RAs for .Cat and .Pro, which also contain the URS. You can draw a dot-ted line through those registries that brings the URS to .org, .net and .com when they come up for renewal as de facto, staff-determined policy absent any demonstrated community consensus.

And when the URS reaches those big legacy domains, what will it look like? A review of the Report of Public Comments on the “Draft Report: Rights Protection Mechanisms Review” makes clear that if certain interests have their way the URS could be changed in the future to become an accelerated, lower-cost version of the UDRP, with the same burden of proof plus a domain transfer option. The result of transforming URS into URT (Uniform Rapid Transfer) would be more opportunities for domain hijackers and far less due process for domain registrants.

Whether the URS should change, much less if it should become a consensus policy for legacy gTLDs, are important policy decisions that should be decided by ICANN’s multistakeholder community through the standard PDP – not imposed in an unaccountable top down manner by ICANN staff.

EFF has made a valuable contribution to ICANN accountability by expressing its strong opposition to this high-handed attempt to short-circuit proper decision-making procedures. Let’s hope that more organizations and individuals speak out while the public comment period on these RAs remain open — and at the upcoming ICANN meeting in Buenos Aires.

4
May

ICA to ICANN: We’ll “Vigorously Oppose” Changing URS to Facilitate RDNH

On Thursday, April 30th ICA filed a comment letter with ICANN regarding the “Draft Report: Rights Protection Mechanisms Review” published earlier this year. This preliminary report paves the way for a more extensive issues report on the new gTLD RPMs that will be delivered to the GNSO Council this fall. That second report will not only inform the debate on whether the RPMs should be changed prior to any future rounds of new gTLDs, but also may set the stage for a full-fledged policy development process (PDP) on UDRP reform that could kick off in 2016. The UDRP is the only consensus ICANN policy that has never undergone such review and reform.

In its letter ICA stated its opposition to any suggestions that a domain transfer capability should be added to the Uniform Rapid Suspension arbitration procedure:

ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking.

However, ICA does understand trademark owner concerns that domains suspended in a URS procedure can currently be re-registered for infringing purposes at the end of their registration period, and suggested an alternative win-win approach that could balance their interests with those of domain investors:

However, we are sympathetic to the concerns of trademark owners, and would suggest the alternative of permanently barring the re-registration of a URS losing domain where the domain name/trademark is not a generic term and its registration by anyone other than the rights holder would almost surely constitute infringement. This concept could also be explored in regard to generic terms registered at gTLDs whose names correspond to the goods and services for which the word is trademarked by the prevailing complainant. Such an approach would not invite URS abuse for domain hijacking purposes but would afford permanent protection to infringed rights holders – and without the unending costs associated with holding a domain defensively in a large and growing portfolio.  

Other key points made in ICA’s comment letter were:

  • ICA would not support any expansion of the TMCH matching rules to include plurals, mark+keyword, and common typos.
  • ICA supports the inclusion of more comprehensive information regarding generic words and infringement in the Claims notice, as well as clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes.
  • We would not support any extension of the mandatory Claims generation period beyond the initial ninety days until our concerns about the Claims notice are effectively addressed.
  • ICA would oppose any easing of the TMCH verification requirements for court decisions or UDRP cases.

 

ICA will continue to articulate its members’ views in regard to the RPMs and the UDRP as this discussion continues within ICANN.

Trademarks and domains are both valuable intangible assets. The respective rights of their owners must be carefully balanced in any revision of these critical arbitration and brand protection policies to ensure that the asset value of domains and the due process rights of registrants are adequately protected and respected.

The full text of our comment 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

 

                                                                                                April 30, 2015

By E-Mail to comments-rpm-review-02feb15@icann.org

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

 

Re: Draft Report: Rights Protection Mechanisms Review 

Dear ICANN:

I am writing on behalf of the members 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. 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.

This letter addresses the Draft Report: Rights Protection Mechanisms Review that was published for public comment on February 2, 2015. That document, drafted by ICANN staff, is intended to inform the Issue Report on new gTLD Rights Protection Mechanisms (RPMs) requested by the GNSO as well as the independent review of Trademark Clearinghouse recommended by the GAC. In addition, the same document is intended to serve as input to the Review Team on Competition, Consumer Trust, and Consumer Choice to be convened under Section 9.3 of the Affirmation of Commitments, charged with assessing the effectiveness of the safeguards developed for the New gTLD Program.

Executive Summary

  • ICA would not support any expansion of the TMCH matching rules to include plurals, mark+keyword, and common typos.
  • ICA supports the inclusion of more comprehensive information regarding generic words and infringement in the Claims notice, as well as clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes.
  • We would not support any extension of the mandatory Claims generation period beyond the initial ninety days until our concerns about the Claims notice are effectively addressed.
  • ICA would oppose any easing of the TMCH verification requirements for court decisions or UDRP cases.

 

  • ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking. However, we are sympathetic to the concerns of trademark owners, and suggest an alternative approach that would address their concerns to a significant extent.

Trademark Clearinghouse (TMCH)

While no specific question on this issue is raised at the end of Section 3, we note that a portion of Section 3.4 (Matching Rules) states:

ICANN continues to receive feedback regarding the “identical match” definition, specifically, that ICANN should consider expansion of the matching rules to include plurals, “marks contained” or mark+keyword, and common typos of a mark. The scope of matching was one area identified by the GAC in recommending an independent review of the Trademark Clearinghouse, and this topic is expected to be explored in that review as well.

ICA already has substantial concerns, detailed in this letter, about the high number of false positive Trademark Claims Notices being generated that are likely deterring legitimate noninfringing domain registrations, especially for generic words that have one or more TMCH matches.

Further, as noted in the report, “The matching rules are intended to provide an objective, automatable way of determining a match, rather than the Clearinghouse making subjective determinations”, and any easing of the matching requirement would inevitably require the TMCH to exercise subjective judgment.

In addition, the ability to register up to fifty previously abused variations of a trademark that were found infringing in litigation or a UDRP under the Abused Domain name label service already permits rights holders some substantial degree of protection beyond exact matches.

Therefore, we would not support any expansion of the TMCH matching rules to include plurals, mark+keyword, and common typos. 

Trademark Claims Service

We first address Section 5 questions a, b, and f, which are:

  • Is the Claims notice an effective form of communication?
  • For those with registrant/customer interactions, what has been the customer response to Claims notices?
  • How could the Claims service be improved?

ICA believes that the current language of the Claims notice is unduly intimidating to potential registrants, especially those lacking any sophisticated understanding of trademark law, and that the language needs to be modified in order to clarify that registration of a generic word that is trademarked for a particular class of goods and services is unlikely to result in infringement if registered for another intended purpose.

On March 12th ICA published an article, “Estimating Trademark Claims Notice Suppression of Non-Infringing New gTLD Registrations”, which made these observations regarding statistics contained in the Report:

[T]his statistic regarding Trademark Claims Notices generated by the Trademark Clearinghouse (TMCH) leapt out:

Sum of TLDs with initiated Claims periods         297

Sum of Claims Transactions                                    96,471

Sum of Claims Notices Generated                25,221,479

That 25 million-plus Claims Notices statistic is the one that garnered attention. As of February 1, 2015 the total number of domains registered in all new gTLDs was approximately 4.2 million, so the ratio of Claims Notices to new gTLD registrations was about 6:1. That is, for each new gTLD domain that was registered there were about 6 additional registrations that were commenced for some purpose – but of that total number, only three tenth of one percent (96,471 out of 25,221,479) continued on to completing a “transaction” resulting in a domain registration.

…[since March 2014] the number of Claims Notices has increased fifty-fold, the percentage of completed registrations against TMCH inquiries has declined by more than ninety percent, and the ratio of Claims Notices to registered new gTLD domains has increased from 4:3 to 6:1. So the TMCH is clearly having a “chilling effect” – but is it primarily chilling potentially infringing or non-infringing domain registrations?

… As of January 2015 34,300 marks had been submitted for registration into the TMCH. So, on average, each registered mark generated 735 Claims Notices.

At the time the Report was issued, there were 297 new gTLDs that had initiated Claims periods, so there was an average of 85,000 Claims Notices generated per new gTLD. For the vast majority of new gTLDs that is far higher than their total domain registrations to date – indeed, only the top seven new gTLDs exceed that figure.

So what is going on here? Is the TMCH incredibly effective at deterring the registration of trademark infringing domains? Or is it incredibly effective at deterring the registration of domains with an intended use that would not infringe trademark?

It may well be a lot of both.

… No doubt there have been attempts by intentional cybersquatters to register trademarked names that have been effectively deterred when they received a Claims Notice and realized that the trademark owner would be notified of the domain registration immediately and might well take some form of legal response.

But there also may have been lots of potential registrants for non-infringing uses of short and meaningful generic dictionary words as domain labels who were spooked enough when they received the Claims Notice to abandon the registration. While the Claims Notice does provide a prospective registrant with information regarding the Jurisdiction where the trademark is registered and the class of Goods and Services that the trademark covers, most prospective registrants of non-infringing domains are not well versed in trademark law, don’t want to have to spend money to consult a lawyer to see if their registration will be infringing or not, and don’t want to risk being hit with a cease-and-desist letter, UDRP or URS filing, or a trademark infringement lawsuit. The same could be true even for potential registrants well versed in trademark law who simply don’t wish to expose themselves to a potential legal action, regardless of its merits – especially since continuing on to registration after receipt of the Notice might be alleged to constitute proof of bad faith registration.

The legalistic language of the Trademark Notice would certainly cause major hesitation for most prospective general public applicants… Revising the language of the Claims Notice to make it more understandable by a registrant lacking deep understanding of trademark law might also be considered, but that can hardly be relied upon to protect the registrant from post-registration legal action by the trademark owner.

… Summing up, the TMCH has almost surely been quite effective in deterring infringing domain registrations at new gTLDs. But it appears to also have been a substantial damper on total new gTLD domain registrations. The unanswered question is how big of a headwind it has been.

That article estimates that several million legitimate registrations may have been deterred by receipt of Claims notices, while noting that it is impossible to know the exact number.

We believe that the generation of Claims notices will continue to deter legitimate noninfringing domain registrations at new gTLDs. This situation can be partly but not completely addressed by providing more comprehensive information in the notice, and also clarifying under what circumstances the post-notice registration of a domain will be considered to constitute “bad faith” for UDRP and URS purposes. In conjunction with this observation, we would not support any extension of the mandatory Claims generation period beyond the initial ninety days until these concerns are effectively addressed.

We also address Questions i and j:

  • How effective is the inclusion of previously abused labels in protecting against trademark abuse and infringement?
  • Should the standards for verification of previously abused labels be modified?

According to the Report:

Since the introduction of the Abused Domain Name Label service in October 2013, 324 domain labels based on 158 cases have been added… ICANN has received some feedback in regard to the documentation required to verify UDRP cases. To verify that the mark that was the subject of the case is the same as the mark in the Trademark Clearinghouse record is difficult in some cases if the rights holder no longer has the UDRP or court filings or records, or where the trademark information was not included in the original complaints.

Given the great controversy generated within the ICANN community by the substance and manner of adoption of the “Trademark-plus-fifty” proposal it is rather remarkable how little it has been used, especially since it only costs $50-75 to verify a UDRP case. We have no explanation why the trademark interests who fought so hard for the “Strawman proposal” in which it was contained have made so little use of it.

We would oppose any easing of the TMCH verification requirements for court decisions or UDRP cases. Domain investors who have been the subject of such cases (increasingly in the context of attempted domain hijackings via UDRP) maintain their own records of those legal actions, and it is difficult to believe that a  rights holder which initiated a trademark case UDRP, or counsel thereof, would not have equal access to such records. Any easing of the verification requirements would inevitably invite abuse.

Uniform Rapid Suspension (URS)

We address questions a and e of Section 6:

  • How effective is this service in providing a quick and low-cost process for addressing infringement?
  • What factors could be addressed to make the URS more effective?

ICA participated in the development of the URS and understands that it is meant to be a narrow supplement to, and not a broad substitute for, the traditional UDRP. It provides rights holders with a lower cost and faster means of addressing infringing domains, especially when they are associated with such public harms as malware distribution, phishing, or spam.

In regard to this portion of the Report:

Overall, ICANN has received feedback received from the community is that the URS has produced positive results and that it works fairly well in terms of what it is designed to accomplish. It is quick, inexpensive and caters to those who have slam-dunk cases or are indifferent towards the suspension of the name solution, perhaps due to the fact they are unable to register that name. However, some rights holders have not opted to use this service due to the remedy being limited to suspension only.

There is also concern over the possibility of the domain name being registered once more by another potential infringer once it is released, thus some rights holders feel more comfortable having the domain name in their portfolio, which can be achieved via a UDRP. Indeed, initial feedback has indicated that suspension of the domain name is not a long-term solution.

The key term in that passage is that the URS “works fairly well in terms of what it is designed to accomplish”. It is no surprise that it does not work well for purposes beyond its design – a design that was worked out through consensus that emerged from months of intense discussion and negotiation within the community.

While the URS does provide a prevailing claimant with the option of extending the domain’s registration period for one additional year it is not – and was never meant to be – a permanent solution for a rights holder who wishes to permanently remove it from the pool of available domain names.

ICA would vigorously oppose any attempt to amend the URS to provide a domain transfer option as such a rapid and circumscribed process could be readily abused to further the scourge of reverse domain name hijacking.

However, we are sympathetic to the concerns of trademark owners, and would suggest the alternative of permanently barring the re-registration of a URS losing domain where the domain name/trademark is not a generic term and its registration by anyone other than the rights holder would almost surely constitute infringement. This concept could also be explored in regard to generic terms registered at gTLDs whose names correspond to the goods and services for which the word is trademarked by the prevailing complainant. Such an approach would not invite URS abuse for domain hijacking purposes but would afford permanent protection to infringed rights holders – and without the unending costs associated with holding a domain defensively in a large and growing portfolio.  

Conclusion

We appreciate the opportunity to provide these comments on the draft Report. We hope they are helpful to the ICANN community’s further consideration of this highly important matter, especially as staff work to prepare an Issue Report on new gTLD Rights Protection Mechanisms (RPMs) to be delivered for GNSO review and consideration this fall.

Sincerely,

 

Philip S. Corwin

Counsel, Internet Commerce Association

1
Oct

ICA Exploring Domain Theft Project to Counter a Growing Abuse

There has been a lot of domain industry press attention lately to domain thefts. We don’t know for sure if this problem is becoming more acute or is just being reported on more often. But, regardless of the level of activity, we know that there are inadequate recovery and punitive remedies available at present for domain owners who experience theft of their valuable domain assets. Something is very wrong when a hacker can surreptitiously transfer a valuable domain and there is no reliable or cost-efficient means for recovering it.

ICA’s Board is therefore considering initiation of a Domain Theft Project (DTP) to address this issue, in the belief this is exactly the type of issue that ICA was established to address.

One component of the DTP would be to discuss the situation with leading registrars as well as ICANN’s Registrar Stakeholders Group to gather more information on the severity of the problem, as well as to better determine how these thefts are accomplished and what best practices on the part of both registrants and registrars might prevent them.

In addition, assuming that there will still be thefts occurring even if stronger preventative measures are adopted by registrars and registrants, the DTP will carefully explore at least three potential avenues of better redress for registrant victims of domain thieves:

1. Amending the UDRP to allow it to be used for the recovery of stolen domains. The exploration of this potential avenue will be very carefully conducted to assure that any potential UDRP revisions do not create new opportunities for scam artists to abuse the UDRP for domain hijacking. But UDRP reform will be on the table and under discussion within ICANN as of April 2015 as part of the review of new gTLD Rights Protection Measures (RPMs), so if an acceptable proposal can be developed it can be advocated for adoption within that review and reform context.

2. Amending Federal law to establish clear civil liability for illicit access to the computers of a registrar, and to also clarify that available equitable relief includes restoration of the domain to its original owner. This would likely involve the House and Senate Judiciary Committees. The biggest challenge here will probably not be getting the concept looked upon favorably but the larger context of amending the underlying statute, which inevitably brings in other players and complex issues. There’s also the reality that getting anything through Congress these days, no matter how worthy, is a big challenge. But the DTP’s initial focus would be on drafting a bill and seeking its introduction to focus attention and foster discussion.

3. Amending the Registrar Accreditation Agreement (RAA) to require registrars to preserve and publish title history. This may be somewhat difficult because the registrars are understandably inclined to push back against anything that involves more work or that may increase their liability. The RAA was also just amended in 2013 and that process involved one-on-one negotiations between the registrars and ICANN, with limited access and information provided to third parties. Nonetheless ICA has good contacts with the registrar community and can start discussions to explore their receptiveness, as well as whether they have ideas about other approaches. Perhaps one result will be to encourage registrars to compete in the marketplace on the basis of which provides the best anti-theft security.

In addition to the above initiatives, changes in Federal criminal law may also be worth exploring. ICA member and domain attorney Stevan Lieberman has recently  dealt with the FBI and Department of Justice on this and is willing to contribute his experience and legal expertise and take the initiative on this potential aspect of the DTP. Steve’s experience in assisting the victim of the MLA.com domain theft, as well as other incidents, are detailed in this recent Huffington Post article — http://www.huffingtonpost.com/2014/09/29/domain-theft_n_5877510.html. Other ICA members have also volunteered to serve on the DTP, and we welcome further interest and participation.

Meanwhile, another recent article provides details regarding growing domain theft activity based in China —http://domaingang.com/domain-news/rise-dragon-domain-theft-china-gaining-momentum/. That suggests another avenue of possible effort – given the US Trade Representative’s efforts to curb IP piracy based in China and other nations, we could explore encouraging similar efforts against domain theft activities.

The DTP can also encourage greater attention to this problem by both domain industry and general media outlets. Public attention and information will be a key component of preventative best practices as well as making the case for needed reforms. This is a problem that affects more than just the domain investment industry; small businesses are particularly vulnerable and can suffer devastating losses when their customers can no longer reach them at a website they have used for years.

The DTP will also collect anecdotal information about individual domain thefts, including details of how the theft occurred, how long the time period was between the theft and its discovery by the registrant, and whether the domain(s) was recovered. We will need to build a database of actual domain theft incidents to make a case for changes in Federal law and ICANN policies, as well as to help determine whether the measures we are contemplating will be effective and comprehensive.

This is an ambitious project and its goals will proceed on different timetables and take considerable effort to achieve. But we know that the current situation is not tolerable – and if domain investors don’t take the lead for change then who will?