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CORE comments on the five mechanisms proposed by the IRT Report

  • To: irtp-draft-report@xxxxxxxxx
  • Subject: CORE comments on the five mechanisms proposed by the IRT Report
  • From: Amadeu Abril i Abril <Amadeu@xxxxxxxxx>
  • Date: Wed, 6 May 2009 11:47:09 +0200

CORE Internet Council of Registrars welcomes the IRT report as a very corageous and informed effort to address the long-standing issue of IP rights protection in an expanded gTLD space. It summarise the best mechaisms among those currently available and the most likely feasible among those yet to be tried. CORE, as a registrar channel, and as a registry services provider for some of the existing gTLDs, has helped to design and implement some similar procedures, and also has made some proposals for future new gTLD process. In order to keep the comments as focused as possible and help the IRT in its tight schedule, we keep the comments in this post limited to the concrete proposals made, and as short as possible. In a separate post we address some other relevant points beyond the evaluation of the five concrete mechanisms detailed in the IRT Report.

1) IP Clearinghouse. We support the creation of a cross-TLD mechanism allowing both exclusion of registrations, and automated monitoring of registrations for IP rights holders. In fact CORE proposed, as early as 2000 a “trademark-exclusion mechanism” across TLDs as part of its .nom application (the .tmx service). The current proposal for an IP Clearinghouse has the merit of trying to operationalize these concepts, most of them stemming from the comprehensive contributions of Bart Liben. Our support comes with the following comments, caveats and suggestions:

* The Globallly Protected Marks List is the most suitable candidate for the “great idea, impossible to implement” award. We all, and specially WIPO spent lots of time, meetings and efforts trying to devise a protection mechanism for “famous trademarks”. With endless discussions, and general consensus that no valid, as in globally acceptable, set of criteria could be agreed. Those proposed by the IRT are as useful, but also as arbitratry and prone to endless discussion as any alternative set.

* If the IRT, as we suspect, finds too much difficulty in finalising a globally-agreed GPML’s set of criteria, a simpler and equally effective standard could be used, (simplifying the whole proposal (in itself a desirable result). Just provide protection to all those trademarks willing to be protected. Globally or locally famous or not. By the means of a rebuttable presumption that exact matches cannot be registered. That is, excluding exact matches from automated registrations, but not blocking applications for such second-level strings, that could individually overcome that presumption either by simple agreement of the trademark owner seeking protection or by determination of an independent third party designed for those purposes (taking into account the concrete circumstances of the trademark asking for exclusion, the applicant and the rules and circumstances of the given TLD in which the exemption from the blockage is sought).

* We urge the IRT to consider the past experiences in which IP Claim systems, Watch systems and registration policies interfered with one each other as to make the whole protective intent meaningless.

* As for Watch services, we wonder how compatible or not the IP Clearinghouse proposal will be with similar existing services. While there is a need for a centralised database of rights, it is less clear that there is a need for a centralised provision of (paid) services from it. We urge ICANN the cost and competitive consequences of such a system, and the implications of granting such apparent array of new sole-source services to a commercial vs a non-commercial provider; one affiliated or in competition with the users of those services or not, beyond the reference to the reuqired independence from “ICANN contractual parties”.

* We appreciate the list of other rights that may be included in the IP Clerainghouse conept contained in Appendix Two, we consider that Designations of Origin MUST, and not may be treated for the purposes of the IRT Report in the same way as registered trademarks. While unregistered trademarks, family and personal names, shop signs or other categories might be protected in certain legal systems and might be relevant to certain new gTLDs, designations of origin are a global system with equivalaent value and risks. Registration procedures for designations of origin might be different than those needed for trademarks, but all the mechanisms described in the IP Clearinghouse (and also the Uniform Rapid Suspension Procedure) should be available without question to them.

2) Uniform Rapid Suspension Mechanism. We fully support the purpose of this mechanism, and would like adding the following comments:

* We don’t support the automtic takedown of the domain in case of the registrant failing to (or willingly deciding not to) file an answer. The registrant might be convinced that the complaint is frivolous, irrelevant and not deserving much attention and much less justifying some expenses that will probably exceed the cost of the domain registration. Not answering a complaint limits the ability to defend himself, but should not be equated to a default decision against the registrant. This is not the case with the UDRP, and should not be the case here.

* While the URS should be uniform, the decision should take into account the concrete policies of the concrete TLD. Some (sponsored or community-based) TLDs place today some community-relevant naming rights above IP (trade mark) rights. And for perfectly justified reasons (as in .cat or .museum). This should be taken into account in any URS procedure, and therefore, corresponding language should be added to the current draft.

As we explain in a separate comment, we believe that similar Suspension Mechanisms should apply to other bhaviors, such as using domains for fishing or spaming purposes. Adn, more generally, to Charter compliance or registration-restrictions compliance, whenever they are in place in a given TLD (but this latter case is less of a candidate for a “uniform” mechanims, but still equally relevant for the purposes of a well-policed, responsible DNS that does not create unjustified costs to third parties.

3) Post-Delegation Dispute Policy. We would prefer saying this procedure is unneeded. Unfortunately, ICANN has a rather poor track record in contract compliance. This fact, and the current situation in which fear of some new gTLDs causing all sort of trouble (or just some trouble) is effectively preventing many other responsible gTLD applicants from moving forward. Taking all this into account, we support the current proposal. The considerations contained in section 2.2.1 of the proposed draft Policy seem to provide for an adequate guarantee to responsible gTLD operators.

In order to make this proposal really operational, ICANN should consider revising two aspects of the Guidebook, as we already pointed out in our comments to the first draft:

* Make more explicit in the questions to be answered by the Applicants that they have to provide specific regsitrations compliance and dispute resolution mechanisms in their application.

* Incorporate such policies into the TLD Registry Agreement

Hopefully this will happen in the nest, and final Draft.

4) Thick WhoIs. CORE has supported and continues to support this model. With the same conviction and energy as we support a WhoIs model that allows individual registrants with no commercial purpose in the use of their domain names to opt out in having their personal contact data published (as required by many legal systems, general privacy concerns... and common sense). In any case, CORE will only work with new gTLD applicants with a thick WhoIs approach.

5) Use of algorithm in string confusion. We have already expressed our reservations about the usefulness of this mechanism. The relevant question is not similarity but confusion and this cannot be determined by an algorithm but only by human appreciation. The use of the algorith would lead to raise issues in cases such as .com/.co. Conceptual construction, meaning and use are as relevant as visual similarity: .coop can perfectly coexist with the Italian supermarket brand Coop. Or, for even greater conceptual differentiation and unlikely confusion, .cat and Caterpillar’s “CAT” brand. We only hope ICANN does not spend more time and resources in this “tool”

We thank again the members of the IRT for their diligence and intelligence and encourage them to further refine the mechanisms proposed in light of the comments they are receiving.

Amadeu Abril i Abril
CORE Internet Council of Registrars

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