On March 9th, 2016, during its final open meeting at ICANN 55 in Marrakech, Morocco, the GNSO Council approved a motion that I proposed to adopt the Charter of the Policy Development Process (PDP) to Review all Rights Protections Mechanisms in all Generic Top-Level Domains. I serve on the Council as one of the two representatives of ICANN’s Business Constituency, and my fellow Councilors designated me to serve as the GNSO’s Liaison to the Working Group (WG), and as its Interim Chair.
The Motion approved by the Council provided ICANN staff with a 21-day deadline, ending March 30th, to issue a public call for volunteers to serve on the WG. It is expected that the WG will likely schedule its first virtual meeting in the latter half of April, at which point it will begin to organize its work plan and select a permanent Chair or, more likely, several Co-Chairs. While my selection as Interim Chair is not a guarantee of being one of this WG’s Co-Chairs, I do hope to secure that official role. While not being precluded from advocating particular views in their personal capacity, a Chair or Co-Chair must be fully committed to putting aside their personal views or those of their clients/employer in regard to their official administrative duties and responsibilities to the diverse membership of the WG — and to assure that all WG volunteers have a fair chance to advocate their views and have them considered. Should I secure a Co-Chair slot I will be committed to helping to manage a fair and open process that produces a final report and recommendations that is based in sound legal reasoning and verified empirical data – and that all WG participants can be proud of having contributed to.
While many volunteers will already be participants in ICANN Supporting Organizations (SO) or Advisory Committees (AC), that is not a prerequisite for WG participation. ICANN’s WG Guidelines note that a WG should ideally “mirror the diversity and representativeness of the community”, and that the WG Chair(s) have the responsibility of continually assessing whether the WG has sufficiently broad representation or, conversely, “over-representation to the point of capture”.
The Charter sets forth a two-phased approach, described here:
This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. By the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals.
This PDP may well draw volunteers by the dozens given the importance of the issues it will examine to the trademark law, brand protection, domain investment, and IP public policy sectors, as well to the business models of ICANN’s contracted parties, both registries and registrars. Involvement may be further boosted by the likelihood that any final recommendations made by this WG that are subsequently adopted by ICANN may well fix the rules for the intersection of trademark law and domains for the next decade or more.
Those considering volunteering should be aware of the substantial time commitment involved. Once the WG launches I would expect it to hold a one-hour call almost every week. My personal guesstimate is that the review of new gTLD RPMs will take at least twelve to eighteen months – and that the subsequent UDRP review could take even longer, given the breadth of potential procedural and substantive issues, and the fact that this will constitute the first review of the UDRP since it was adopted at the dawn of ICANN’s creation.
Some members of the domain investment community, as well as other interested parties, may be thinking of waiting until the phase two review of the UDRP commences before becoming engaged in the WG. In my view that would be shortsighted, as working relationships and individual credibility will be established during the RPM phase that will be critically important when the WG pivots to review of the UDRP.
In addition, as the non-exclusive list of Potential Issues listed in the Charter makes clear, the Phase One determination of answers to some of the questions could have a substantial impact on, and set precedents for, the subsequent UDRP review. For example, regarding Uniform rapid Suspension (URS), issues to be considered include:
Likewise, the review of the Trademark Clearinghouse (TMCH) will address such questions as:
TMCH registrations are currently limited to trademarks meeting high verification standards – plus, under the Trademark+Fifty supplementary implementation measure, variations of the mark that have actually been recovered by the rights holder in a UDRP filing or trademark infringement litigation can also be registered. Attempting to register a domain matching a registered mark or TM+50 variation generates a Trademark Claims Notice to the potential registrant, and UDRP panels have yet to clearly define the weight that will be given to receipt of a Claims Notice in determining whether a subsequent domain registration was made in bad faith.
Finally, as for Trademark Claims, review issues include:
While the review has been designed as a two-phased process to make the workload manageable, and to first address potential modifications of new gTLD RPMs before a subsequent round of new gTLDs is launched, this illustrative list of issues makes clear that determinations made during phase one will inevitably implicate the phase two UDRP review.
There is of course a possibility that the WG will encounter significant internal turbulence, especially if some participants seek to re-litigate every substantive aspect of the new gTLD RPMs as well as of the UDRP. On the other hand, there is tremendous opportunity to seek common ground and undertake procedural reforms that provide greater assurance of consistency and predictability for both rights holders and domain registrants — especially if undertaken within a balanced approach recognizing the legitimate rights and interests of all parties, and acknowledging that ICANN’s proper role is to respect legal rights while refraining from the creation of new extralegal rights.
Anyone with a serious interest in trademark rights, domain monetization, and domain industry operations should give serious consideration to joining this WG, while remaining fully cognizant of the long and potentially difficult road ahead. Important and challenging work will be on the agenda for all who choose to engage as volunteers.
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