Yesterday, in an article published at CircleID.com, our fellow trade group the Domain Name Association (DNA) announced the rollout of its Healthy Domains Initiative (HDI). DNA was established concurrent with the launch of the new gTLD program, and primarily represents new gTLD registries as well as some registrars, but not registrants (including domain investors and developers). ICA and DNA share a number of members and we generally view our work as complementary.
It’s that last proposal that is of greatest concern to ICA and its members, since it would establish proprietary dispute resolution mechanisms that could result in domain extinguishment or transfer. Further, it could set a precedent which trademark owners might cite in seeking privatized “best practices” trademark dispute resolution policies that go beyond whatever community-based consensus policies emerge from ICANN’s ongoing working group reviewing all rights protections mechanisms (RPMs) at all gTLDs. Therefore, ICA plans to take a leading role in analyzing and monitoring the details and implementation of the new “Copyright UDRP” and in exploring means to assure that ICANN-mandated RPMs for trademark owners do not simply become a floor from which they can seek to pressure registries to adopt far more onerous and unbalanced private RPMs.
Of course, no one wants “unhealthy domains”, and all four of the targeted concerns are all worthy areas for exploring more effective responses. That said, the devil is in the details, and each of the separate components will no doubt be analyzed for their potential effectiveness as well as consistency with prevailing law and adequate due process for domain registrants.
In its background paper, DNA relates the genesis of the HDI initiative:
During the ICANN meeting in Marrakech in March 2016, parties interested in HDI met to further review and discuss these ideas. It was agreed in that meeting that the next best output for the HDI effort was to put forth a set of operational principles to which contracted parties could reasonably adhere. HDI leaders thus focused on such a document as the first deliverable in the HDI effort.
Now at that 2016 Marrakech meeting ICA and many other parties responded affirmatively to DNA’s request for input on the HDI initiative from those outside its membership. Unfortunately, once we signed on there was no real follow-up by DNA; ICA made several inquiries and was told that we’d be hearing more soon, but we never did. It’s unfortunate that DNA chose to develop HDI without the benefit of additional viewpoints, and it was apparent from e-mail exchanges yesterday on the HDI list that many of those who offered to provide outside input were disappointed and chagrinned that, after responding affirmatively, they were never brought into the planning loop and did not even receive an advance heads up of the HDI announcement.
The bottom line is that ICA had no advance knowledge of the details of HDI and no opportunity to provide substantive input. So our fingerprints are nowhere on it.
The HDI background paper does state that for each of the four target areas “1-2 HDI committee volunteers… will direct subteams in developing implementation plans”, but it’s not clear whether those outside of DNA will be solicited in regard to such implementation.
Turning to the initiative that is likely of greatest interest and concern to ICA members, the “Voluntary third party handling of copyright infringement cases (PIR proposal)” aims to “to provide a voluntary mechanism to help mitigate copyright infringement in the DNS, by a method similar to those employed by trademark owners to protect their interests”. However, it is not clear that the UDRP is a suitable model for copyright disputes, which tend to be far more complex than trademark infringement allegations and where free speech and fair use are often at issue.
An adverse ruling against the domain registrant would result in “cancellation of registration or transfer to Complainant”. A fuller explanation in the background paper posits that the aim of this “Copyright Alternative Dispute Resolution Policy (“Copyright ADRP”) is to provide a legally effective and efficient mechanism mitigating pervasive instances of copyright infringement in the DNS, while ensuring that Registrants’ due process rights are observed”.
The potential for domain loss from a Copyright ADRP decision could well have a chilling effect on the domain leasing and licensing business, as the owner of a valuable domain with no domain name trademark issues could be reluctant to risk its loss if a lessee/licensee used it to distribute content later found to infringe copyright.
As noted above, this copyright UDRP is dubbed the “PIR Proposal”, and according to a related news article:
Public Interest Registry, the company behind .org, tells DI that it hopes to adopt the UDRP-style anti-piracy measure by the end of the first quarter…PIR general counsel Liz Finberg, the main architect of the policy, said that these details are currently being finalized in coordination with UDRP arbitration firm Forum (formerly the National Arbitration Forum). The standard, she said, will be “clear and convincing evidence” of “pervasive and systemic copyright infringement”.
It remains to be seen whether Internet rights groups such as the Electronic Frontier Foundation will support this Copyright ADRP or blast it as a new variation on the private adjudication approach proposed in the PIPA/SOPA legislation that went down in flames after millions of calls and emails bombarded Capitol Hill. Interestingly, PIR was founded by the Internet Society (ISOC) and ISOC appoints PIR’s Board members. In December 2011 ISOC joined the broad and vocal opposition to the Stop Online Piracy Act (SOPA), stating “While the Internet Society agrees that combating illicit online activity is an important public policy objective, these critical issues must be addressed in ways that do not undermine the viability of the Internet as a platform for innovation across all industries by compromising its global architecture”.
While ISOC was primarily concerned with the negative impact of ISP’s DNS filtering upon Internet security and stability it also stated:
DNS filtering and blocking raises human rights and freedom of expression concerns, and often curtails international principles of rule of law and due process. Some countries have used DNS filtering and blocking as a way to restrict access to the global Internet and to curb free expression.
The United States has been a strong proponent of online Internet freedoms and therefore has an important responsibility to balance local responsibilities and global impact, especially with respect to Internet policy. Given this commitment to global Internet freedom, it would be harmful to the global Internet if the United States were to implement such an approach.
It seems to us that those very same concerns about human rights, freedom of expression, and due process may be raised by an ADRP system that results in domain cancelation or transfer to copyright owner complainants, especially given the content industry’s long history of aggressive, pushing-the-envelope use of all available mechanisms to address alleged infringement. So we’ll be watching to see whether PIR’s proposed implementation of ADRP stirs up concerns among ISOC members similar to those inspired by SOPA.
Finally, regardless of its final details or whether it is implemented, ICA is quite concerned that any proposal for privatized DRPs may be cited by trademark owners to pressure registries to adopt “best practices” that go beyond official ICANN RPM policy. Right now more than one hundred members of the ICANN community are engaged in a working group (WG) that is reviewing all RPMs at all gTLDs, including the URS and UDRP.
What if the final consensus decision of that WG is that the URS remedy should remain domain suspension and not transfer, or that the UDRP standard of “bad faith registration and use” should remain as is? Are TM owners then free to develop their own “best practices” that include domain transfer via URS, or a bad faith registration or use standard? What’s the point of going through a multi-year exercise if those dissatisfied with the result can seek stiffer private policies? Just how many bites at the apple should trademark holders get, especially when such private initiatives just build upon ICANN’s existing consensus-based polices and therefore almost always end with a lessened burden of proof and harsher penalties, ratcheting ever forward on behalf of trademark owners and against domain registrants?
While it’s true that registries have always been able to adopt protective measures that go beyond ICANN requirements – witness the protected marks blocking lists being offered by some new gTLD portfolio owners to TM rights holders as an alternative to sunrise registrations – we believe it is now time to examine and limit that ability in regard to DRPs that can result in the transfer of valuable domains. ICA intends to raise that matter within the ICANN community and to seek allies for the proposition that all parties benefit from the adoption of uniform, consensus-based RPM policies as opposed to a disjointed system of varying RPMs designed to benefit just one side of the debate.
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