Internet Commerce Association: URS is the Wrong POLICY for the DNS
BUTERA & ANDREWS Attorneys at Law 1301 Pennsylvania Avenue, N.W. Washington, D.C. 20004-1701 202-347-6875 Philip S. Corwin, Partner pcorwin@xxxxxxxxxxxxxxxxxx<mailto:pcorwin@xxxxxxxxxxxxxxxxxx> 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. Discussion 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 heard. 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 complaints. · 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. Conclusion 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. Sincerely, Philip S. Corwin Counsel, Internet Commerce Association Philip S. Corwin Partner 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 Attachment:
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