Comments on IRT Report
These comments are submitted in my personal capacity as a long-time participant in the ICANN process and not on behalf of my law firm, Adorno Yoss, or any of its clients. This message has been sent at 9:00 pm, Pacific Daylight Time, on 6 May 2009. I have four principal concerns with the IRT Recommendations:
1. The Creation of an "IP Clearinghouse" is Beyond ICANN's Scope.While the "IP Clearinghouse" could be a valuable tool to ensure that information about trademark registrations and other claims of legal right are available to a wide audience, the real question is why ICANN, of all the organizations in the world, should be the organization that designs, accredits and oversees a database of the world's trademarks. If the clearinghouse idea has utility, either inside or outside the area of domain names, nothing stands in the way of other bodies creating one. If a worldwide trademark database were created, it could prove to be a useful tool for registries, registrars, registrants -- as well as by many others operating outside the area of domain names. ICANN, however, should not take on the tremendous task of preparing an RFP, evaluating responsive bids, selecting and accrediting a trademark database provider.
ICANN can welcome the creation of a worldwide trademark database, either by WIPO or through a private, market-based solution, but it should neither make this task its own nor delay its own work while others build and populate an “IP Clearinghouse.”
2. Protection, Not Allocation.Trademark registrants should be entitled to trademark protection, but not a first-right of registration. Prospective domain name registrants should have at least as good an opportunity as anyone else in the world to register a domain name that they intend to use for any lawful, non-infringing purpose. For this reason, "Rights Protection Mechanisms" ("RPMs") should protect trademarks, not allocate domain names. Any RPM that acts as an allocation mechanism should be rejected. By that test, a significant effect of the IRT's "GPM" is to allocate domain names to a certain category of trademark registrant, usurping registration opportunities from registrants, even in countries where the so-called "GPM" has no registration or effect. The premise of the GPM is that certain words cannot be used in other than their trademark sense, anywhere those words are used in the DNS, anywhere in the world. This is an obviously false premise.
3. "Rapid Suspension" is a GNSO Issue, Not a Board Issue.As a lawyer who frequently handles domain name arbitrations and trademark litigation and who participated in the ICANN processes that created the UDRP, I am well aware of the time and effort that went into the creation of the UDRP, the successes and failures of the current UDRP, the different ways that individual UDRP arbitrators evaluate UDRP complaints, and the inconsistent results of those arbitrator's decisions over time. Creating a dispute mechanism that is predictable and reliable – even for what is intended to be egregious cases on the extreme margins of the registration spectrum – is complex and requires consideration of the issues from all involved. If "Rapid Suspension" has merit, it should be proposed by the IPC within the current GNSO structure, where it could be more thoroughly considered by the broadest segment of affected parties and considered in conjunction with a review and revision of the current UDRP, with which it overlaps.
4. "Post Delegation Dispute" is Inappropriate.The IRT section on a proposed “Post Delegation Dispute” mechanism is poorly described, but the intent seems to be to ask ICANN to expand its contractual compliance program to a registry’s treatment of trademarks. Many of the items described in this section, such as a registry creating an environment for trademark abuse, are hard to measure and inappropriate for either dispute resolution or contractual compliance. The best remedies for the sorts of problems described in this section are in courts of law, not in a new dispute mechanism.
-- Bret Fausett