ICANN – What are the risks to domain owners of new proposal to protect IGOs?

There were several issues discussed by the ICANN board, the Generic Names Supporting Organization (GNSO), and by many other constituencies meeting in San Juan in late June. One old issue that returned is the question of who has the right to register the names of countries and names “of national or geographic significance”, including names and abbreviations of International Intergovernmental Organizations (IGOs).

This issue is being driven by the Government Advisory Committee (GAC), composed of national government representatives, which continues to hold all its meetings behind closed doors despite ICANN’s verbal commitment to greater transparency. The GAC  and  the World Intellectual Property Organization’s (WIPO) ultimate goal is to allow governments, public authorities and IGOs to block all such names in new gTLDs “upon demand”, and to take domains that they consider “abusive” under a new Dispute Resolution Procedure that will give them substantially greater leverage than the current Uniform Dispute Resolution Process (UDRP). In short, their ultimate goal is to expand the DN dispute process far beyond the bounds of traditional trademark law while simultaneously undermining the rights of DN registrants.

 

These attacks on the legitimate rights of current and future DN registrants have been rebuffed by ICANN in the past, in part due to objections from most constituencies other than the GAC. The new tactic to achieve this goal seems to be through incremental changes developed outside the Policy Development Process (PDP) that is generally utilized for policy changes of this magnitude. A June 15, 2007 ICANN Staff report submitted to the GNSO proposes that it would be “more efficient” for staff to develop the new DRP to provide protection for the 581 names and 289 abbreviations currently registered with WIPO for IGOs. While this new DRP would apply only to new gTLDs at first, it is contemplated that these “protections” would eventually be applied to all names of national or geographic significance, and then to offending DNs at existing gTLDs to “eliminate the confusion”. What names could be included in names of national or geographic significance? The names of countries, cities, famous or infamous citizens, holidays, landmarks, local events, etc. are all at risk. Where does it end? Are ApplePie.com and July4th.com names of national significance in the US?

 

One critical aspect of this potential new DRP is the denial of access to a national court as currently exists for registrants aggrieved by a UDRP decision – as IGOs, governments, and public authorities do not want to submit to the jurisdiction of any judicial forum located in another nation. If a registrant lost its domain name in this new DRP there would be no opportunity to take the case to its national court to block the transfer of the domain name to the IGO or other governmental claimant. Instead of appealing an unfavorable DRP ruling to a court in its own country the registrant would only be able to enter into an as yet undefined ICANN-administered arbitration process that would likely put severe limits on its ability to reverse the initial decision.

 

While WIPO alleges abusive use of IGO names to defraud people of contributions and other payments it also maintains that most IGOs cannot (or are at least unwilling) to use the UDRP process to stop abusive use of such domains. The ICA strongly condemns the fraudulent use of IGO-related DNs to further phishing scams and other frauds, but cannot support the backdoor adoption of new DN dispute rules to stop such bad faith uses where they would extinguish the legitimate substantive and procedural rights of DN owners.

 

It was recently made clear that in at least one jurisdiction, you would not have any chance of keeping your geographic domain. According to DomainNameNews.com, “The Court of Justice in Berlin Germany has decided that private entities are not eligible to register country names, no matter in which language. The decision says that only the countries themselves have the right to own countries equivalent to their country’s name, no matter in which language.” Maybe they don’t like the way Germany.com is being used, so they think that they should be able to take it. Since the registrant is in Germany, they probably can take it. However, a German court should not be able to take a name from a non-German registrant.

 

All GAC meetings are closed to the public so it is impossible to know what its ultimate goal is. However, it is reasonable to assume that clever people who want to hijack valuable domain names and suppress criticism of government actions will try again and again to have policies established at ICANN to allow them to do so, especially since bad ideas never seem to die in the ICANN process but just keep coming back in revised forms through different procedures.

 

The GNSO voted to further study this matter and to consider initiation of a PDP on IGOs when it next meets in September. The ICA is very concerned by this proposal as it would open the DN dispute process far beyond trademark disputes and deprive DN registrants of fundamental substantive and procedural rights. Any proposal of this sweeping import must be developed, if at all, through an open PDP process that involves all ICANN constituencies. It is simply unacceptable to let ICANN staff – which may well be seeking to curry favor with the GAC and WIPO as ICANN pursues its own fanciful notion of converting to a Private International Organization with substantial immunity from legal challenge if US oversight ends in 2009 – develop a DRP behind closed doors, apply it through backroom contract negotiations to new gTLDs, and then impose it retroactively on .com, .net. and all other existing gTLDs.

ICA Counsel Phil Corwin spoke for ICA members before the ICANN Board and the GNSO Council in separate meetings to ensure that the interests and rights of registrants are not forgotten while considering this new dispute process. ICA will continue to consult with ICANN to protect the commercial rights of domain registrants. There was no one else on the Board, staff, or from the floor expressing any concern about the rights to registrants in this new proposed process. However, we are aware that other constituencies share our concerns about the grave import of this proposal and we are reaching out to work with them and to maintain a balanced DN dispute procedure that adequately protects registrants and provides a meaningful right of appeal.

 

Please support ICA with your membership and plan to attend ICANN meetings to support registrant rights. The next ICANN meeting is in Los Angeles from October 29 – November 2. I hope that many US domain owners will join the ICA and stand with us there.

Appendix

DomainNameNews.com – “The Court of Justice in Berlin Germany has decided that private entities are not eligible to register country names…”

http://domainnamenews.com/legal-issues/german-court-its-not-ok-to-register-country-names 

 

WIPO – “…misleadingly similar registrations as domain names (of country names) by persons unconnected with the constitutional authorities of the States concerned.  It was recommended that this protection should be implemented through an amendment of the UDRP and should apply to all future registrations…”

http://www.wipo.int/export/sites/www/amc/en/docs/wipo.doc

 

ICANN GAC – “2.7 Applicant registries for new gTLDs should pledge to: a) Adopt, before the new gTLD is introduced, appropriate procedures for blocking, at no cost and upon demand of governments, public authorities or IGOs, names with national or geographic significance at the second level of any new gTLD.” b) Ensure procedures to allow governments, public authorities or IGOs to challenge abuses of names with national or geographic significance at the second level of any new gTLD.”

http://gnso.icann.org/issues/igo-names/issues-report-igo-drp-15jun07.pdf

  

ICANN GAC – “The GAC is also aware that there is a lack of consensus and divergent views with respect to the protection of country names within the ICANN constituencies and will consider the matter further with a view toward engaging in discussions on this issue at some point in the future.”

http://www.icann.org/correspondence/tarmizi-to-twomey-15jun06.pdf

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