IRT/GPML Comments

[Graham Chynoweth <gchynoweth@xxxxxxx>]

Below are comments on the IRT report, submitted on behalf of Dynamic Network 
Services, Inc., a registrar, a brand owner and a registrant.


SUMMARY

This comment, succinctly put, opposes the adoption of the GPML as part of the 
trademark protection regime to be used in conjunction new TLDs.  As discussed 
below, the GPML should not be adopted because it is inconsistent with the IRT’s 
own "framework and considerations" and arguably opens up legal issues that 
could be exploited to slow the creation and use of new TLDs.   At a minimum, if 
the GPML is to be further considered, further investigation should be made as 
to whether: (a) it is indeed consistent with the "framework and considerations" 
and (b) it comports with the free speech/expression laws of relevant 
jurisdictions.


DISCUSSION

In the IRT Final Draft Report, a recommended new mechanism, the GPML, is 
proposed, which will: 

I. prevent individuals from applying to create a new TLD that is identical or 
confusingly similar to certain 'globally protected marks' until the party 
interested in running the TLD has gone through a not insignificant 
administrative process and proven "that the applied-for TLD is not sufficiently 
similar (visually, aurally, and in commercial impression) as to be likely, as a 
matter of probability and not mere possibility, to deceive or cause confusion 
or that it otherwise has legitimate rights to use the applied-for TLD", IRT 
Final Draft Report, p 19., and 

II. prevent individuals from registering domain names in a new TLD that are 
identical to certain 'globally protected marks' until they prove that the 
"registration would be consistent with generally accepted trademark laws; 
namely, that its use of the domain name would not infringe the legal rights of 
the GPM owner." IRT Final Draft Report, p 19. Or more explicitly stated, in 
such cases, "[t]o overcome the block, the applicant must show that it has a 
right or legitimate interest in the initially blocked name." Id. 

This proposed mechanism arguably creates a system of 'prior restraints' and at 
a minimum, shifts the trademark enforcement regime from a remedial one to a 
proactive one.   This very meaningful shift: (I) contradicts one of the IRT's 
own "framework and considerations", see IRT Final Draft Report, P. 11., for the 
development of a trademark protection scheme and (II) potentially opens up 
ICANN and the new gTLD process to a legal attack from free speech advocates and 
organizations. 

More specifically with regard to the former issue, the IRT Final Draft Report 
states that its "recommendation[s] should protect the existing rights of 
trademark owners, but neither expand those rights nor create additional legal 
rights[.]" Id. It is difficult to imagine how the bestowing a right of 'prior 
restraint' on the owners of 'globally protected marks' or, alternatively 
stated, providing a proactive (instead of remedial) enforcement regime meets 
this test.  Proactive enforcement regimes are inherently more expansive than 
remedial regimes because they bring more innocents into the system of 
enforcement.  By way of analogy, if the regime used to enforce driving laws 
were made proactive instead of remedial, everyone who left a bar intoxicated 
with car key in their pocket would be arrested for drunk driving, whether they 
intended drive a car or not.  

More specifically with regard to the latter issue, given the strength of the 
prohibition on 'prior restraints' in United States constitutional jurisprudence 
and that ICANN is linked to the activities of a federal agency of the United 
States government, it seems apparent that any opponent to the proposed scheme 
would have, at least at first blush, a credible argument to make before US 
courts, should they desire to prevent the implementation of the IP Clearing 
House and GMPL recommendation into the new TLD space.  It is also worth noting 
here that the United States is merely one of the jurisdictions under which a 
'prior restraint' regime of trademark enforcement could run afoul of free 
speech/expression law.

Given the relevance of the idea of 'prior restraint' to this comment, it seems 
important to outline the concept more concretely, at least in the context of US 
law. Thus, more specifically, 'prior restraint' is the creation of any 
mechanism that effectively prevents or retards an individual from speaking or 
publishing material until they can prove the truthfulness or legitimacy of 
words they intend to speak or the material they intend to publish. See Near v. 
Minnesota, 283 U.S. 697 (1931).  The concept of 'prior restraint,' and 
rationale supporting the argument that it is prohibited by the US Constitution, 
was established in Near v. Minnesota. In Near, the Court justified its 
opposition to 'prior restraints' in this way: "The fact that the liberty of the 
press may be abused by miscreant purveyors of scandal does not make any the 
less necessary the immunity of the press from previous restraint in dealing 
with official misconduct. Subsequent punishment for such abuses as may exist is 
the appropriate remedy, consistent with constitutional privilege." 283 U.S. 
697, 720. Paraphrasing in common parlance the essence of the argument, the 
Court found that just because some (even many) people behave badly (even very 
badly), doesn't mean that their bad behavior justifies prohibitions on innocent 
actors. Or, in the current context - don't punish the grower that wants to 
register 'apple.food' just because some miscreant wants to sell knock off 
computers on 'apple.deals.'

Respectfully submitted,
Graham Chynoweth
General Counsel
Dynamic Network Services, Inc.