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Internet Commerce Association: URS is the Wrong POLICY for the DNS

  • To: "irt-final-report@xxxxxxxxx" <irt-final-report@xxxxxxxxx>
  • Subject: Internet Commerce Association: URS is the Wrong POLICY for the DNS
  • From: Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>
  • Date: Mon, 6 Jul 2009 21:29:33 -0400

Attorneys at Law
1301 Pennsylvania Avenue, N.W.
Washington, D.C. 20004-1701
Philip S. Corwin, Partner

By E-Mail to irt-final-report@xxxxxxxxx<mailto:irt-final-report@xxxxxxxxx>

               July 6, 2009

Board of Directors
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601

Re: Public Comment on Trademark Protection (IRT Final Report)

Dear Members of the ICANN Board:

This comment letter is submitted by the Internet Commerce Association (ICA) in 
regard to ICANN’s May 29th notice establishing a period for public comments on 
the Final Report of the Implementation Recommendation Team (IRT) proposing 
trademark protections for new generic Top Level Domains (gTLDs).

ICA is a not-for-profit trade association representing the direct search 
industry. Its membership is composed of domain name registrants that invest in 
domain names (DNs) and develop the associated websites, as well as the 
companies that serve them. Professional domain name registrants are a major 
source of the fees that support registrars, registries, and ICANN itself. The 
ICA is an International Member of ICANN’s Commercial and Business Constituency 
and presently has more than 120 members located in the United States and 
thirteen other nations.

Executive Summary

 *   The ICA has been constructively engaged with the new gTLD process since 
its inception. We unsuccessfully attempted to nominate a domain investment 
industry trademark protection expert to the IRT and, despite his rejection, 
made an oral presentation to the IRT in San Francisco. We also provided 
detailed public comments to the ICANN Board in Sydney. We stand ready to 
provide continued constructive input to a transparent and inclusive process 
that adequately recognizes the legitimate rights and interests of domain 
registrants, including domain investors and developers.
 *   The only proper means by which a balanced and revised UDRP can be set in 
place across all gTLDs, incumbent and new, is to immediately initiate an 
expedited PDP charged with producing such UDRP reforms to be set in place prior 
to the initial launch of new gTLDs in the last quarter of 2010.
 *   The proposed URS will almost entirely displace the UDRP at all new gTLDs. 
It deprives registrants of due process rights, lacks adequate sanctions against 
complainant abuse, provides inadequate time for registrant response, and fails 
to provide an acceptable means of substantive appeal. It is a major new policy 
proposal and one that is unacceptably slanted in favor of trademark interests, 
and it would be outrageous for ICANN to ignore the clear lack of community 
consensus on this proposal and attempt to implement it absent further review 
through an expedited PDP.
 *   The proposed GPML appears infeasible and lacking of adequate basis in 
trademark law, and its adoption would place ICANN in the inappropriate and 
untenable role of treaty organization/legislative body.
 *   The SSRP has considerable merit – as does the IP Clearinghouse, but only 
if its scope and use is carefully circumscribed.


The ICA’s Position Has Been Consistent and Constructive

The ICA has been actively and constructively engaged in the new gTLD process 
since it first became open to public comment. We filed an extensive comment 
letter regarding the initial Draft Applicant Guidebook (DAG) on December 15, 
2008, and filed a similarly detailed commentary in regard to the 2nd version of 
the DAG on April 13, 2009. Likewise, while we filed a formal complaint with the 
ICANN Ombudsman alleging that the IRT was conducting its activities in 
violation of relevant provisions of the ICANN Bylaws requiring that its 
constituent bodies act to maximize transparency and fair representation, we 
have nonetheless engaged with the IRT and many of its individual members in a 
thwarted attempt to bring balance and the preservation of adequate due process 
rights for registrants into its recommendations. This engagement with the IRT 
included traveling to San Francisco to make an oral presentation to its 
members, despite the fact that the domain investment industry was afforded no 
representation on the IRT notwithstanding our nomination of an industry expert 
in expedited, private sector relief mechanisms for trademark owners.

The ICA position on Rights Protection and the UDRP remains the same as that 
stated in our initial December 15, 2008 comment letter:

Strong, cost-effective, and readily implemented protections for rights holders 
should be established but they must be limited to enforcing their rights under 
existing law and not be premised upon the creation of broader rights by ICANN 
fiat. It is for this reason that we object to creation of a reserve list of 
trademark names as this would provide rights protections beyond the geographic 
and relevant marketplace limitations of trademark law. We also object to the 
imposition of any new rights or procedures that would supplant or supplement 
the UDRP absent extensive consideration of such proposals in a process that 
ensures that registrant concerns about current UDRP enforcement trends are 

ICA has continually registered our strong objections to any alteration of the 
UDRP proposed to be implemented through a fast-tracked one-sided process, such 
as that constituted by the IRT, the agenda and membership of which was 
controlled by the Intellectual Property Constituency (IPC). Again, as we stated 
in our December 15th letter: “Any alteration or supplementation of the UDRP 
should not be implemented as a footnote to new gTLD implementation but only 
after presentation to and consideration by the community -- and such process 
must take into consideration and redress concerns with the present UDRP voiced 
by registrants and not simply react to the complaints of trademark interests.”

ICA also attended and made public comments at the workshop on trademark 
protection and malicious behavior held at the recent Sydney ICANN meeting, and 
also addressed the ICANN Board on the subject of the IRT Report at its Public 
Forum in Sydney. And we plan to attend and participate at the initial global 
consultation on new gTLDs to be held in New York City on July 13th.

We recount the extensive history and the constructive nature of our engagement 
on this subject to preemptively refute any allegations that may be voiced (as 
some were in Sydney) that strong opposition to the IRT Report or any of its 
specific recommendations is “not constructive” or even “obstructionist”. We 
believe that a constructive solution to the challenges posed by a significant 
expansion of the gTLD space can only emerge from a policy-making process that 
encompasses all affected parties. We recognize that trademark owners are 
frustrated by the cost and delay of the current Uniform Dispute Resolution 
Process (UDRP), as well as the fact that a successful challenge requires the 
complainant to acquire and maintain registration on a domain they never wanted 
in the first instance. The ICA is fully prepared to work constructively with 
the trademark community to resolve these and other concerns at all gTLDs – 
incumbent and new – as we believe the best domain dispute policy is one that is 
uniform across all gTLDs. This approach would have substantial benefits for 
trademark owners as their major infringement challenges are at .com and will 
likely remain so for many years into the future. This is a far better approach 
than imposing an unbalanced URS on new gTLDs while maintaining a flawed UDRP at 
the incumbents.

But trademark owners also need to be constructive. They need to recognize that 
registrants have legitimate concerns with the UDRP as well – including its 
cost, growing lack of uniformity encouraged by forum shopping, lack of binding 
precedent, and costly or nonexistent appeals process.  The introduction of new 
gTLDs cannot be an excuse for one-sided UDRP reform that speaks only to the 
problems and concerns of complainants while ignoring those of registrants, much 
less one that almost entirely displaces the UDRP with a new policy that gives 
short shrift to the legitimate interests and due process rights of registrants. 
We have heard IRT members state that their Report is not a trademark “wish 
list” and that they have made many “compromises”, but the facts remain that  
the Report and the process leading up to it was controlled by the trademark 
sector and that the “compromises” were negotiated within their own ranks.

Likewise, the ICA has never sought to obstruct or delay the introduction of new 
gTLDs. We recognize that the expansion of the DNS has always been part of 
ICANN’s mission statement and that an objective and fully formed procedure is 
required to realize it, and that registrants can benefit from increased 
competition and innovative business models facilitated by new gTLDs. Our 
overarching concern has been to assure that the rights and interests of domain 
investors as regards registry pricing, trademark protections, geographic names, 
and other critical issues are recognized and preserved as the process goes 
forward. Addressing these legitimate concerns is in the best interest of ICANN 
and gTLD registry applicants, as excessive and unbalanced treatment of 
trademarks and geographic names, along with the potential for differential 
pricing by registries, will substantially dampen demand for domains at new 
gTLDs and weigh heavily against their ultimate economic success.

Our call for the IRT Report to be the starting point for a transparent and 
fully inclusive Policy Development Process (PDP) to develop balanced trademark 
protection mechanisms – a call echoed by many others at the Sydney meeting – is 
not an attempt to  unreasonably delay the introduction of new gTLDs at all, 
much less obstruct them. We believe that an expedited PDP can be undertake and 
result in balanced and effective UDRP reforms being put in place before the 
first new gTLD opens for business in the last quarter of 2010. In the interim, 
a “placeholder” notice in the DAG can simply advise prospective gTLD applicants 
that an expedited PDP has been initiated in this regard, and that they shall, 
be expected to fully comply with whatever policy changes are adopted. We 
understand that there are precedents for this approach, and compliance with 
improved and balanced trademark protections should not cause any legitimate 
gTLD applicant to hesitate. Further, it is quite possible that balanced and 
effective UDRP reform can be undertaken as a two-step process (such as is 
occurring now with amendments to the Registrar Accreditation Agreement (RAA)), 
with consensus matters being rapidly implemented while more contentious 
subjects are accorded further study and negotiation.

Finally, at a time when ICANN’s relationship to the U.S. government under the 
Joint Project Agreement (JPA) is undergoing review in advance of its September 
30th termination date, and when ICANN’s future relationship to other 
multinational organizations is also in flux, it is especially important that 
ICANN demonstrate its continued commitment to a bottom up, consensus driven 
policy development process. That commitment must be demonstrated by an 
admission that the URS and other IRT Report proposals are major new policy 
initiatives that can only be put in place after broader review and input from 
the entire ICANN community.

The URSP is the New UDRP

Our principal objection to the IRT Report is its proposal for a Uniform Rapid 
Suspension (URS) system at new gTLDs. The IRT claims that the URS is “intended 
to supplement and not replace the UDRP” but even cursory analysis leads to the 
conclusion that the URS will almost entirely displace the UDRP at new gTLDs 
(and trademark interests have already openly voiced their desire to see the URS 
imposed upon incumbent gTLDs as rapidly as possible). Further, we have 
deliberately chosen to refer to the URS as the URSP because it would clearly be 
a major new POLICY for domain name disputes. As it is a policy, it would be 
completely at odds with ICANN’s professed commitment to a bottom-up, consensus 
policy process to implement this recommendation representing primarily the 
viewpoint of a single constituency. That is why we believe it is mandatory that 
ICANN convene an expedited PDP under the auspices of the Generic Names 
Supporting Organization (GNSO) which is the ICANN entity charged with 
developing consensus domain name policy.

There can be little doubt that the URSP will displace the UDRP. First, the 
elements that must be demonstrated by a complainant are identical, but for the 
requirement that the complaint involve a trademark registered in a national 
regime meeting a specified qualitative standard. While the required evidentiary 
standard is “clear and convincing evidence”, rather than the UDRP’s somewhat 
lesser “preponderance of the evidence”, we believe that an inadequately 
compensated examiner working within an extremely expedited process where low 
costs encourage the simultaneous filing of multiple complaints will have little 
ability or incentive to ponder the hazy dividing line between such subjective 
standards. The URSP’s displacement of the UDRP is also assured by its absurdly 
low filing costs (as low as $1.50 per disputed domain in simultaneous filings 
against 101-200 domains) and the fact that a successful complainant will not 
incur the cost of taking over and paying for the continued registration of a 
successfully challenged domain. These very same factors will encourage abuse by 
complainants even as inadequately compensated and overburdened examiners find 
it infeasible to accord substantive and procedural due process to registrants.

The conclusion that the URSP will displace the UDRP is further buttressed by an 
analysis conducted by the World Intellectual Property Organization (WIPO). An 
April 3, 2009 letter from WIPO to ICANN states that an analysis conducted in 
conjunction with their own proposal for a similarly expedited suspension 
process found that limiting it to domains names that were identical to textual 
or word elements of a trade or service mark, or which included textual or word 
elements that were identical to those marks, would “capture a significant 
majority of UDRP disputed domain names”. If an “identical” test would capture a 
significant majority of UDRP cases, then an “identical or confusing similar” 
standard, such as is proposed in the URSP, would clearly capture the 
overwhelming majority of UDRP filings. That same WIPO letter also urges 
consideration of whether an expedited examiner even should or could determine 
identity or confusing similarity. As the URSP has been characterized by its 
proponents as a virtually automated process in which no subjective analysis is 
required we do not see how any such process can ever be applied to a 
“confusingly similar” standard where a subjective assessment must be made of 
the likelihood of consumer confusion; in fact, even an “identical” test will 
often require extensive analysis of the website associated with a domain name 
to determine whether it harbors content that infringes on a trademark given its 
associated geographic and relevant marketplace limitations. In other words, a 
truly automated suspension process would be limited to an extremely narrow 
range of domains where blatant infringement can be immediately recognized from 
the domain name and website content -- yet the pricing scheme proposed by the 
IRT, which contemplates simultaneous challenges involving 200 domains or more, 
demonstrates that it  is viewed by trademark interests as a double barrel 
shotgun and not a sniper’s rifle.

Other registrant concerns regarding the URSP include:

·         The lack of adequate sanctions against abusive complaints. A one-year 
suspension from having recourse to the URSP, triggered only after three 
separate incidents of abuse, lacks effective teeth to deter bad conduct. At a 
minimum, abusive complainants should be required to compensate registrants for 
monetary costs and losses associated with an abusive complaint; and punitive 
damages should be levied against repeat offenders. Further, whatever the number 
of abuses required to trigger substantial sanctions, they should be counted 
against the parent company and all subsidiaries and affiliates of a given 
corporate entity lest such a company spread abusive filings among its 
constituent entities to exploit a potential loophole. In addition, any attorney 
that files more than a de minimus number of abusive complaints in a set period 
should be barred from bringing any further URSP actions for a minimum of three 
years and should be permanently banned from ever serving as a URSP examiner.

·         Inadequate time for registrant responses – 14 days is insufficient to 
prepare an adequate defense, especially when faced with multiple simultaneous 

·         The great expense, or outright absence, of an appeals process 
according substantive review to registrants who believe that their domains, and 
the associated income, have been unfairly suspended. This is another area in 
which the URSP is completely unbalanced – a trademark complainant who fails in 
a bid to have a domain suspended can simply move on to the UDRP, another 
administrative procedure. But a losing registrant in a URSP challenge has no 
administrative appeal option, as there is no “reverse UDRP’ and the appeal to 
the examiner’s ombudsman is not a true substantive appeal but only goes to the  
narrow question of whether the examiner’s decision was an abuse of discretion 
and/or process (and, honestly, how often is an ombudsman going to make such a 
determination of abuse?). This leaves the registrant with the sole option of an 
expensive and extremely lengthy judicial appeal, if he resides in a 
jurisdiction with a national law similar to the U.S. Anticybersquatting 
Consumer Protection Act (ACPA).

Again, we must reiterate that adoption of the URSP would constitute a major new 
policy initiative for ICANN. It would implement the seriously mistaken policy 
of having non-uniform dispute procedures at incumbent versus new gTLDs, with 
the dispute resolution policy for new gTLDs being markedly slanted in favor of 
trademark interests and against registrants. Such profound policy decisions can 
only be undertaken through a PDP conducted through the GNSO – any attempt to 
impose it absent such a PDP would be at complete variance with ICANN’s internal 
rules and would greatly undermine confidence in ICANN’s private sector model by 
many segments of its participating community, as well as by nations and 
multinational organizations that are closely monitoring ICANN’s activities.

Additional IRT Views

While the URSP is the principal focus of our concerns arising from the IRT 
Report we do have additional comments regarding some of its other provisions:

·         We share the concerns voiced by many other parties that the proposed 
Global Protected Marks List (GPML) may prove difficult or impossible to 
implement, would likely expand dramatically in scope over time, and lacks 
adequate foundation in existing trademark law. The establishment of a 
preemptive, global “famous marks” list would place ICANN in the improper role 
of an international treaty organization/multinational legislature.

·         We believe that the proposed Standard Sunrise Registration Process 
has merit as a means of avoiding unnecessary duplication of effort as new gTLDs 
are introduced and trademark owners are given initial opportunity to secure 
their marks as domains at new registries.

·         We also believe that the IP Clearinghouse may have merit insofar as 
it would create a standardized global database of protected marks for the 
mutual benefit of rights owners and registrants. However, in our view such a 
database must be restricted solely to registered trademarks and exclude 
unregistered marks, geographic names, family names, etc.; must include reliable 
information regarding the relevant marketplace and geographic scope of a given 
trademark; and should not in any way be utilized in conjunction with the URSP 
or GPML, both of which we oppose. We also object to any requirement that a 
registrant who learns that a domain name they are seeking to register matches a 
mark contained within the IP Clearinghouse be required to make various 
representations and warrants as a pre-condition of such registration as 
unnecessary. A registrant in receipt of such information will be well aware 
that the domain may be the subject of a subsequent challenge and that a 
legitimate interest, good faith use, and correct WHOIS information will take on 
heightened importance in that context. Given that every generic dictionary word 
is the subject of one or more trademark registrations, and that the total 
number of global trademarks is staggering (in the U.S. alone there were more 
than 1.3 million active certificates of trademark registration in 2008) it is 
unduly burdensome and extremely prejudicial to place an affirmative duty upon 
all registrants seeking to acquire a domain that matches a Clearinghouse mark 
but which is intended to be utilized in a completely non-infringing manner. It 
is also wholly unnecessary, as all registrants are put on notice that their 
domains are subject to UDRP challenge, and agree to abide by it, when they 
contract with a registrar to register and renew their domains.

·         Finally, we would urge ICANN to reconsider its entire approach to 
trademark protection on the DNS.  We have just read an excellent research paper 
by American University/Washington College of Law Professor Christine Haight 
Farley, entitled “Congruence and Incongruence: Trademark law and ICANN’s 
Introduction of New Generic Top-level Domains” (available at 
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1400304 ). Professor Farley 
observes that “because the new gTLD policy imports certain concepts from 
trademark law in an effort to address architecture issues, this policy would 
result in long-term problems both for domain names and for trademark law 
jurisprudence”. She goes on to observe that two of the principal underpinnings 
of trademark law – territoriality and consumer confusion – have little 
relevance to a global DNS serving a culturally and educationally diverse user 
population. She then opines that “changes in policy such as this one may create 
a slippery slope where a technical organization like ICANN slides into a more 
prominent position in Internet governance”.

      She concludes her paper with the declaration:

       I strongly urge domain name policy makers to consider carefully the 
appropriateness of importing trademark law concepts into domain name policy.

       What is at stake here is the risk that fundamental principles of 
trademark law will lose their force…my fear is that this policy wrenches 
trademark law out of its practice with limitations and defenses poses a danger 
to expression for domain names and trademarks. This risk should be of concern 
to anyone who cares about trademark policy.

The ICA cares very much about balanced trademark policy (and we note that 
Professor Farley has no doubt that what is being discussed is major new 
POLICY). We therefore join her in urging ICANN to proceed with extreme caution 
in this area. Our experience teaches that the one law that is never repealed is 
the law of unintended consequences. Trademark owners may well find that a 
policy sought to gain advantage over domain registrants results in a diminution 
of both trademark and domain name rights in the global DNS. Similarly, while 
trademark owners tend to favor maintaining ICANN’s private sector leadership 
model, ICANN’s acquiescence with their request to assume powers more properly 
associated with treaty organizations or legislatures may well accelerate the 
push to replace the “light touch” JPA oversight of the U.S. with far more 
intrusive multinational oversight.


We hope that ICANN will find our additional comments useful as it moves toward 
preparation of a 3rd version of the DAG. As stated above, the ICA is strongly 
opposed to any inclusion of the URSP within the DAG, even as a supposedly 
temporary “placeholder”. The proposed URSP is undoubtedly a major new policy 
initiative and not a technical implementation detail, and it is irretrievably 
slanted in favor of trademark interests to the substantial detriment of 
legitimate domain registrants. The only proper way to proceed is to initiate an 
expedited PDP that can result in balanced UDRP reform being put in place across 
all gTLDs prior to the launch of new gTLDs in the last quarter of 2010.

Thank you for your consideration of our views in this matter.


Philip S. Corwin

Counsel, Internet Commerce Association

Philip S. Corwin
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

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Description: ICA-ICANN-IRT_Report-Cmnt_070609-FINAL.doc

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