INTA Internet Committee comments

[claudio digangi <claudiosemail@xxxxxxxxx>]

The Internet Committee of the International Trademark Association (“INTA”) is 
pleased to provide the following comments on the proposed draft Registrar 
Disqualification Procedure (the “Procedure”).
 
While the current draft of the Procedure serves as a good starting point in 
creating a mechanism for enhanced protection of registrants, we believe the 
following items should be addressed or incorporated to further bolster the 
Procedure.

1. Although the background to the Procedure provides guidance as to who is 
included as “registrars” and “registrants,” it may be prudent to include 
definitions within the Procedure for these and other key terms.  This will 
ensure that there is no potential for confusion regarding the scope of 
influence of the Procedure.  We believe that it is imperative that the 
“affiliates” and others affiliated with the registrars are covered under the 
Procedure.

2. Based on the current draft, it is unclear as to the manner in which the 
Procedure is in fact triggered.  The Procedure is brought about by a 
“Triggering Action”, yet it is ambiguous as to how the Triggering Action leads 
to the Procedure.  By way of example, in the event that a registrar is involved 
in infringement of trademarks or other unlawful acts involving trademarks and 
trademark owners, it would be prudent to enable such trademark owners to 
“trigger” the Procedure through a petition to ICANN or such other similar 
process.  To this end, we would suggest a more formalized petition process by 
which the Procedure may be triggered by registrants and those other interested 
parties in the domain name system.  

In addition, ICANN should establish a database, wherein the details of each 
Triggering Action and those resulting in the institution of a Procedure are 
maintained.  The database, at a minimum, should identify the registrar and/or 
the related party receiving the complaint, the date of the complaint, the 
nature of the complaint and the resulting action taken by ICANN.  To ensure the 
interests of the Internet community are protected, the database should be 
easily accessible to the public (e.g., via a website), and all complaints, 
documents and processes should be open to public inspection.

3. The current draft of the petition does not address the time frame of the 
so-called review period, in which a determination will be made by ICANN whether 
to disqualify the registrar.  Also, given that the Procedure is generally 
triggered by egregious acts on the part of the registrar, some operational 
limitations should be placed on the registrars during the review period. It is 
important for such provisions to be in place so that registrants are protected, 
even if ICANN were to make a determination of its decision within a short time 
period.

4. The language of the Procedure should clarify how disqualification or 
de-accreditation of a registrar might affect any monetary remedies an 
interested party, such as a trademark owner, might have in respect to that 
registrar.

5. While the Procedure sets forth a fairly broad scope for activities that may 
constitute disqualification, given the nature of the domain name system, we 
believe that it is critical to specify that, if (a) a registrar is engaged in 
cybersquatting activity or (b) its director, officer, employee or others 
associated with a registrar is engaged in cybersquatting activity and if ICANN 
determines that (i) such cybersquatting activity was a result of registrar’s 
failure to maintain appropriate policies to prevent such activity or to take 
appropriate precautionary measures to remedy such activity; (ii) such 
cybersquatting activity appears to be a pattern or practice or (iii) based on 
such factors like the size of the registrar or the control exerted by the 
principals of the registrar, the activities of directors, officers, employees 
or others associated with a registrar are the same as the acts of the registrar 
itself, such act will constitute a Triggering
 Action.

6. The Registrar Accreditation Agreement (RAA) has a general provision 
requiring that registrars comply with applicable laws, and the Procedure holds 
that a material breach leading to termination of the RAA constitutes a 
Triggering Action. However, in order to preserve the integrity of the domain 
name system (e.g., complaints to ICANN, court decisions, administrative 
rulings, etc.), the Procedure should include as a Triggering Action, the 
failure of any registrar to follow applicable laws (as specified in the RAA).
 
7. With respect to Section 3 Determination of Disqualification, it would be 
advisable to clarify the items outlined in subsections (e.g. “intentional” harm 
or “reckless disregard”) in such a way that will avoid ambiguity (See Example 
Subsection 3.1.3). Moreover, we would suggest revising the heading of Section 
3.1 by removing “Direct;” this will further avoid the complication of 
establishing the involvement of disqualifying acts by various entities and 
individuals.

8. Under Section 4 Duration of Disqualification, we would recommend further 
clarification on points such as “duration and pattern.”  Without further 
guidance, it is difficult to know what may constitute an ongoing pattern of 
conduct.  If, in the alternative, ICANN has purposely drafted this Section 
loosely to reserve discretion for itself, it would still be advisable to 
include additional clarification. This clarification would allow registrants to 
rest assured that this process will protect them and enhance security in the 
domain name system.
                                
Thank you for considering our views on this important issue. Should you have 
any questions regarding our comments, please contact Claudio DiGangi, Manager, 
External Relations, at: cdigangi@xxxxxxxx

INTA’s Internet Committee is a group of over one hundred trademark attorneys 
and professionals from around the world, charged with evaluating treaties, 
laws, regulations and procedures relating to domain name assignment, use of 
trademarks, and unfair competition on the Internet.


Respectfully submitted,

Claudio DiGangi