What else is there?

New site and blogging

2010-06-30T01:56:00.001-07:00

I have just created my own website and all blogs will from now on be posted there. The new site is: www.komaitis.org. Blog posts will be made under the same name: What else is there.

New book on the Regulation of Domain Names

2010-06-12T05:02:00.000-07:00

Abstract from my book: "The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world", available now by Routledge - http://www.routledge.com/books/details/9780415477765/

Questions concerning the legality of domain names have never received the kind of attention they deserved; in all truth, the attention has perpetually focused on the harm trademark owners are enduring through the use of domain names. Early domain name regulation indicates that Internet policies highlighted the threat – potential and actual – domain names were posing to trademarks and any amendments on such policies proceeded on the basis that trademark protection should be more robust and rigorous. The promulgation of ICANN’s UDRP is one such example; it was justified on the face of lack of trademark protection on the Internet and was substantiated on the way domain names impair the value of trademarks. To the present day, domain name policies and trademark regulations are still developed, structured and arranged using justifications of trademark protection.

I strongly refute this assertion. Trademark protection on the Internet is vital; it is equally vital, however, to rationalize the pragmatic considerations of this protection. We have spent time and resources debating and streamlining on the impact of cybersquatting on trademark law, completely disregarding how trademark lobbying has manipulated the authority of Internet institutions (ICANN) and has pressured for policies (UDRP and IRT) seeking to expand the conceptual basis of trademark law. Ten years ago we missed the window of opportunity to formalize the legal nature of domain names and, consequently, strike a balance between the competing interests of trademark owners and domain name registrants.

My forthcoming book – “The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World” – re-opens the discussion on the state of domain name regulation, questioning the legitimacy of its intellectual, institutional and moral structure. The timing for this kind of discussion could not have been more appropriate as ICANN is venturing into new policy with the launch of its new gTLDs programme and intellectual property lobbying is – once again – seeking to direct policy-makers into areas that stretch the philosophical basis of trademark law.

In the book I promote the thesis that the determination and recognition of domain names as autonomous, sui generis, rights is intellectually imperative, because it is through this intellectual conjecture that we will end in modifying the current status quo. Using the theory of property as my starting point, I discuss issues of ownership (dominium) and sovereignty (imperium). My argument centres on the concept of the ‘bundle of rights’ and how it has evolved to denote ownership over tangible and intangible assets; it does not seek to dispute the theory of the ‘bundle of rights’, rather I accept it as property’s contemporary variant. For me, the metamorphosis of property law is occurring at regular intervals and, currently, it encompasses both tangible and intangible assets that can be associated with such a ‘bundle’. This description, however, can have a negative impact on property – the clearest example being trademark rights - one that Morris Cohen identified in his visionary 1927 article when discussing the dangers of the concepts of dominium and imperium being conceptually blurred.

With this understanding of property in mind, I then proceed to display trademarks and domain names. I discuss the systematic effort of the trademark community to canonize trademark protection (Progressives movement) and demonstrate the importance of trademarks as property commodities. However, I also acknowledge that attributing property characteristics does not grant immunity to trademarks, the same way that property does not grant immunity to any right. Trademark law operates under limitations and restrictions (for instance, territoriality, genericness and free speech), which ensure the smooth function of the market and allow entrepreneurship to flourish.

On the contrary, such needs are not preserved through the presence of trademarks on the Internet. There is a great amount of conceptual vagueness and legal presupposition on the kind of protection trademarks should receive in the domain name space. Such an attitude ignores emerging questions concerning the nature of domain names, their relationship with trademarks and their online importance. The truth is that these questions are so complex that American courts are split and seem unwilling to create a blanket rule on how law should treat domain names.

In such a vague environment, the UDRP plays a major role and contributes significantly to this legal cul de sac. Although politics within ICANN have compromised attempts to produce a fair process, the UDRP was meant to be a harmless policy, with a specific subject matter and limited to cover only a very small fraction of trademark infringement. At the time, no one anticipated the UDRP to transcend traditional trademark law and become an online establishment. Nowadays and with a massive body of case law, which shows signs of exponential growth, ICANN’s policy is considered as the dominant platform for trademark vs. domain name resolution.

The UDRP, however, is far from an authoritative statute; its genesis was based on illegitimate grounds, its procedures are substantially flawed and unfair, it restricts the rights of domain name registrants and it is crowded with examples of inconsistent and biased decisions. Its subject matter has been extended to cover almost every trademark issue that occurs on the Internet, disrespecting the traditional and long-standing principles of trademark law, often granting unsanctioned international protection to trademark owners, suppressing free speech and disintegrating the legal rights of domain name registrants. in short, trademark interests have managed to excommunicate domain name registrants and entrepreneurs.

This degree of substantial and procedural unfairness poses an ethical problem for domain name regulation. My thesis is to build a framework for domain names– the “domain name polis” as I call it – where fundamental principles of justice, like fairness, equality and lawfulness, hold a prominent position and direct any amendments on the Policy towards respecting and reflecting these ethical ideals.

The latest proposal by ICANN’s Implementation Recommendation Team (IRT) makes the creation of this framework even more important. Suggesting policy that re-defines the conceptual parameters of trademark law, the IRT advocates the success of the UDRP, does not recognize any of the intellectual legal issues and consciously dismisses the unfairness that is taking place.

It is, therefore, important for scholars and intellectuals to reopen the discussion on the conceptual boundaries of trademark law, revisit its limitations and parameters and refine the state of domain name regulation.

New UDRP study shows signs of unreliable procedures.

2010-04-27T15:48:00.000-07:00

I just happened to come across an article that shows what appears to be another hit in the process that ICANN has placed much of its future on - that is the Uniform Domain Name Dispute Resolution System (UDRP) of course. It all started when attorney Zak Muscovitch released a study concerning the way one of ICANN's accredited UDRP providers - the National Arbitration Forum - is distributing its case load to its various employees. His results show that some of the panelists receive a substantial amount of cases with the majority of these cases being decided in favor of the complaining party (trademark owner). This prompted DomainNameWire to conduct its own study of WIPO panelists and its conclusions were that many of the top 10 panelists have recorded the lowest complainant win.

What does this all mean? Well it means that we are exactly in the same place we were when professor Geist released his study almost 10 years ago. He introduced us to the possibility of forum shopping the same way he introduced us to the fact that we really have no knowledge as to how the centers appoint their UDRP panelists. And, when asked, we always seem to receive abstract and non-satisfying answers. What a great inconsistency for a system that is supposed to be uniform.

So, these results are not really something new and they should not come as a surprise to anyone. Even though it is really the responsibility of each one of the centers to appoint its panels equitably and to the best interests of both parties, the fact that ICANN has left the UDRP on its own and without proper review or control has resulted in a system that demonstrates signs of disintegration (look WIPO's attempt to sidetrack ICANN's Uniform Rapid Suspension System though the initiation of a 'fast-track' process). Needless to say that, at this point, it really makes no difference which center is more bias - the fact remains that the UDRP is disproportionally biased in favor of trademark interests whether this is done through forum shopping or through the intentional appointment of certain panelists.

However, the effect of this study is much more profound. ICANN is currently in the process of using the UDRP as the prototype to suggest the creation of two separate policies - the Uniform Rapid Suspension System URS) and the Post-Delegation Dispute Resolution Procedure (PDDRP). Both processes are conceived, structured and drafted with the whole skeleton of the UDRP in mind - everything, its rules, its procedures, its substance, everything - and have both been justified on the success of the UDRP. Now, what does that tell us about the fairness and justice of these systems?

It actually tells us a lot. It tells us that both systems are about to fail, are about to become biased and are about to create a highly competitive market for the ICANN-accredited centers that will seek to please their trademark customers. Now, if that is done through forum shopping or intentional panel appointments, again it does not really make that much difference. Complainants will still win and both systems will stagnate just like the UDRP.

The UDRP needs an immediate review, especially if it is to be used as the basis for other systems. The fact that the UDRP is so bankable explains why so far none of its stakeholders has initiated any process to review its body both substantially and procedurally; UDRP decisions bring a lot of money and reputation to both the centers and many of their panelists. This is the price of not having in place proper checks and balances that will ensure the proper application of justice.

My Personal Statement to ICANN on its trademark policies

2010-04-01T05:09:00.001-07:00

April 1, 2010

Dear ICANN,

I would first like to welcome the opportunity to submit comments on the revised ICANN proposals concerning the implementation of trademark protection mechanisms, namely the creation of a Trademark Clearinghouse (TMC), a Uniform Rapid Suspension (URS) system and a Post-Delegation Dispute Resolution Process (PDDRP). I would also like to commend ICANN for creating the Special Trademark Issues (STI) team to provide recommendations on how trademark issues should be addressed in light of the new gTLDs programme and the eminent expansion of the Root.

STI was tasked with a heavy duty – to recommend processes and address issues that sought to provide solutions to the benefit of both trademarks owners, non-commercial users and the wider DNS community. Despite the limited amount of time, STI managed to meet its targets and produce recommendations that achieved a legitimate balance between the conflicting interests of the trademark community and individual users. The work and results produced by the STI should not be taken lightly. Notwithstanding the fact that for some its recommendations were not ideal, in that they left some issues unanswered and subject to further deliberations, it has to be accepted that, in the history of ICANN, it has been perhaps the first time that trademark issues have been addressed by a multi-stakeholder body, following ICANN’s bottom-up processes. The recommendations produced by this divergent group were based on compromise and, in their majority, have reached unanimous consensus. To this end, it is important to treat the work of the STI as one that has facilitated the application of justice and due process, has set in motion the introduction of substantive qualitative criteria in the protection of trademarks in the DNS and has, finally, addressed the parameters of the intersection between trademarks and domain names. Seeking to support the vision of ICANN towards the introduction of new gTLDs, the STI recommendations contain certain qualities (unseen and unheard in other ICANN-related trademark policies) – normative generality, substantive definiteness and permanence, all of which contribute significantly to the legitimacy of the STI’s work and its final recommendations.

Through the amendments suggested, the revised ICANN staff proposals place the work and value of the STI in jeopardy; this has a further impact upon the bottom-up policies followed by ICANN. On a general note, the new proposals contain many language mistakes that misinterpret the STI’s recommendations and can easily mislead the bodies that will eventually use these processes. This is a serious issue, considering that it is these proposals that will determine the de jure rights of the participants and their participation in the new gTLD process. Furthermore, some of the additions are arbitrarily inserted, with no justification or reason.

We have to be very careful and it is necessary that this time we get it right. Over the years, ICANN’s trademark policies have received heavy criticism of being captured by trademark lobbying and interests; this criticism should not be perceived as being unjustifiable. The UDRP experience has taught us a valuable lesson: unless we create solid and carefully- balanced frameworks, we are in danger of assigning broad rights to trademark owners, where there is no justification to do so, jeopardize the rights of legitimate domain name holders and upset fundamental principles of trademark legality. WIPO and the trademark community have easily declared the UDRP as a success story, but the issue is far more complex.

It is mainly for this reason that the revised proposals should be carefully worded, artistically structured and remain within their original mandate. The goal here is not just to protect the trademark community and its rights; the goal is to submit to well-balanced proposals that will smooth the registration system and will pave the way for the increase of more participants in the registration environment. The STI operated on that basis; it operated under the presumption that the registration system will have to protect the existing rights but not to the expense of the creation of new ones. Everyone should be afforded the right to participate in the new gTLD process and this should be reflected in all of ICANN’s new gTLD policies, including the one concerning the protection of trademarks.

More specifically and while adhering to the majority of the principles promoted by the STI, the Trademark Clearinghouse incorporates wording, which, at the same time, significantly departs from the STI’s vision. For example, it suggests that ‘ancillary services’ can extend to include every single intellectual property right (p.2), when in the STI’s mind these services only meant to relate to trademarks (‘ancillary trademark services’); through the inclusion of all marks, regardless of jurisdiction (p.2), it seems to be encouraging the creation of ‘trademark havens’, which will pave the way for ‘easy’ registrations, which will further negate the rights of registrants (to an extent even those of existing trademark owners) and make their participation in the gTLD programme a difficult task; it differentiates between valid trademark registrations, negating the right of specific mark owners (those who hold valid trademark registrations incorporating a gTLD term – p.4), even though such rights have been assigned by legitimate Patent and Trademark Offices around the world; it fails to identify the need to incorporate within its structure international agreements, such as the International Class of Goods and/or Services (p.5). These are all critical issues and the fact that have been misinterpreted, wrongly phrased or omitted within this revised version suggests that the proposal for the TMC was not drafted with the idea of having a repository of information, rather with the notion that the TMC constitutes an additional tool for the protection of trademark owners. This is disappointing and dilutes the value of the TMC.

More important issues are being raised in the context of the Uniform Rapid Suspension system and the way it is presented in this revised version. Whereas the STI was very conscious in getting the URS wording right, now attention has not been paid to the language of the rules and procedures, thus curtailing their procedural importance and substantive appearance within the system (for example, the pointless replacement of STI’s “Safe Harbor” terminology with the word “Defenses” or the poor wording of section 5.8, which changes the whole meaning of the sentence by inserting bad faith when it is really about the good faith of the Registrant). Moreover, the revised procedural aspects of the policy operate under a presumption of guilt for the Registrant (“Given the nature of expected disputes in this venue, it is thought, more often than not, that no response to complaints will be submitted… p.3) and create an illegitimate moral dependency upon trademark owners and their wishes (s. 5.2: “Upon request by the Registrant, a limited extension of time to respond may be granted by the URS Provider if there is a good faith basis for doing so and it does not harm the Complainant”, p.4).

The worst aspect of this version of the URS is that it seems to be limiting the procedural rights of the Registrants. In particular, the interpretation of default as being based also upon a mistake during the filing of the response (s. 6.1 “If the answer is determined not to be in compliance with the filing requirements, Default is also appropriate”) is illegitimate. In most of the cases, Registrants represent themselves, operate under confined deadlines and English is not their first language. Should we not, at the very least, recognize these difficulties and give Registrants the benefit of the doubt?

But, to an extent this new version of the Policy seeks to restrict the subject matter of the disputes as well as the remedies against the losing party. This is good, as long as Examiners adhere to it. For the STI, this was achieved through the ‘Safe Harbors’, the option of an internal appeals process, through the ‘Abusive Complaints provision (which needs to return to the STI’s wording since it contains a lot of language errors and is unnecessarily confusing) and, finally, through the mandatory review of the URS. This last provision of the STI, which received unanimous consensus and it would eventually determine the success of the URS, was ‘skilfully’ omitted from this version without any justification.

All these issues will certainly have an impact on the new gTLD programme. How is ICANN expecting to receive the trust of individual users, if it fails to respect their rights and demonstrate that it has learned from past mistakes? How will the wider Internet community trust the new gTLD registration environment?

The Post-Delegation Dispute Resolution Policy (PDDRP) answers this. The PDDRP provides for a mechanism, whose effects, unless carefully considered and reviewed, can have an impact upon the registration culture and the trust it currently enjoys. The Policy is bad – it fails to take into account important factors like the direction it pushes Registries towards, the implications this will have upon the creation of a highly trademark-oriented registration environment and how unsafe and fragile this procedure is.

The STI recommendation paved the way towards the direction of a balanced approach. The STI’s recommendations were the result of a multi-stakeholder team, representing all interests in the DNS and ICANN. There were no winners and no losers – there was a balance. I hope ICANN endorses the STI’s work and ensure that the insertions of version 4 of the Guidebook reflect this balance.

I hope you take these comments into consideration. Thank you.

Dr. Konstantinos Komaitis,

Author of the book “The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world” Routledge.

Olympic - a Greek word: the mistake the International Olympic Committee makes

2010-03-29T09:48:00.000-07:00

Everyone who has been involved in ICANN over the past ten years is aware of the politics and the power struggles that take place within the corporation. Everyone who has been involved in ICANN is especially aware of the politics that take place lately over the introduction of new gTLDs and the protection of trademark owners and their rights. So, I really shouldn't have been surprised when the International Olympic Committee (IOC) joined forces with the trademark community, and started nagging about almost everything: the inefficiency of the Special Trademark Issues group's (STI) mechanisms, the creation of new gTLDs, the Implementation Recommendation Team (IRT) report - everything.

Although I have been following closely ICANN's trademark policies over the years, having heard a myriad of unjustifiable and unreasonable arguments emanating from the greed of trademark owners, I was still surprised to read the communication and arguments submitted by IOC to ICANN (http://icann.org/correspondence/lacotte-to-beckstrom-16mar10-en.pdf).

And, let me tell you why I was surprised.

I am Greek and up until this stage I was not aware that the word 'Olympic' and every variation that derives from it, is the exclusive verbal territory of IOC. Actually, until recently, I believed that the term 'Olympic' with all its variations belongs to the Greeks - not in some elitist, unique sense of dominium , but as being part of the wider historical culture of Greece. I really did not want to indulge in a debate concerning the ownership of any word with historical and cultural connotations, but, since IOC is talking about ownership of the term 'Olympic', let's talk about true ownership.

From a historical and cultural point of view, the term 'Olympic' is Greek; it is ingrained within the Greek culture and its significance for the Greek language is invaluable.I have grown up and have been educated using the word Olympic in various forms and fashions. At school, I was taught Lesia's Olympiakos speech and visited the area of 'Olympia', where the first Olympic games were held; I climbed the mountain Olympos with my friends and have travelled with Olympic Airways; I cheered for my football team against Olympiakos inside the Olympic stadium in Athens. I have never felt any sense of guilt or intimidation when using the term with its multitude of variations and I believe no Greek has either.So, why should I feel it now?

This is, essentially, what the International Olympic Committee suggests in its correspondence to ICANN. The fact that in the United States, the Olympic and Amateur Sports Act recognizes and protects the term as unique, to me, being Greek, means nothing. I really cannot understand how IOC can claim ownership and demand exclusive protection without considering the implications - historical and cultural - that this can have. I wonder whether they have gone to the trouble of consulting the Greek government. What IOC is proposing is not only unreasonable but also illegitimate.

What IOC is suggesting is simple and it is the wishful thinking of all trademark owners: the addition of the term 'Olympic' with all its variations (including, but not limited to, Olympiad and the Olympics) in a reserved list. So, in simple words, me being Greek, I will not be able to register any domain name that is close to the term Olympic. I believe the problem is obvious as is the question: why should IOC receive this kind of protection?

It should not. I am not saying that the term should be an open field for abusive registrations, but this is a far cry from IOC trying to establish exclusive rights on this word. This is the inherent problem with the bargaining power the trademark community has upon ICANN. This has always been the problem and is now getting worse.

So, IOC is mistaken and I am certainly biased in this case. But, the truth is that I have every right to be.

Comments of NCUC’s STI Members

2010-02-13T02:21:00.000-08:00

To the ICANN Board, Staff and the wider Internet Community:

We welcome the opportunity to submit our comments to the recent work of the Special Trademark Issues (STI) team in relation to the overarching issues pertaining the relationship between trademarks and domain names. Like the rest of the stakeholders, we would like to commend the work and collaboration of the STI in submitting its proposals in such a tight timeframe and working under the realisation that the launch of the new gTLDs would be contingent on its recommendations.

In our view, the work of the STI should be evaluated under three pivotal standpoints: substantive, procedural and the effect it has upon the existing legal structures. Before proceeding in analyzing in more detail these three issues, we would like to bring to the attention of both ICANN and the wider Internet community that the recommendations produced by the STI constitute a compromise of all stakeholders involved – the idea of the recommendations were not to please any single constituency or stakeholder group, but instead to produce proposals that would work to the benefit all the constituencies, all the stakeholder groups, and indeed all users of the Internet --- and provide a fair balance for all parties, while serving balance and justice.

 Procedural

The structure of the Special Trademark Issues (STI) team should not be taken lightly. The STI was comprised by representatives of all ICANN’s recognized constituencies (Non-Commercial, Business, Intellectual Property, Registries, Registrars, At-Large and ISPs), adhering this way to ICANN’s mandate for inclusion and representation. The STI has acquired its legitimacy because of this very composition, an issue that was not addressed in the structure of the previous Implementation Recommendations Team (IRT) and one, which has cost much of the IRT’s legitimacy. In this respect, we would like to commend ICANN for promoting a multi- stakeholder approach in the STI and for aligning itself with other multi-stakeholder models in other Internet governance arrangements.

What needs to be noted is that through the STI, ICANN demonstrated its willingness to create an inclusive and representative body and paid attention to the expressed concerns of the Internet community over the composition of the IRT. We would, therefore, like to congratulate ICANN for insisting in a multistakeholder model, the recommendations of which represent the views of a divergent set of actors, promoting different needs and concerns.

 Substantive

While we never wanted these pre- and post-launch mechanisms in the first place, we do fully support the recommendations made by the STI in relation to the Trademark Clearinghouse (TC) and the Uniform Rapid Suspension System (URS). We note that no new issues were raised in the comments. All of the issues were debated for days, hours and weeks by the STI – and we support the balance on both mechanisms as ones carefully crafted by the STI and fair to all registration authorities, registrants and the trademark owners who seek them.

We would like to briefly respond to some of the issues raised during the STI public comments period.

 Trademark Clearinghouse

One thing has to be clear: the creation of a Trademark Clearinghouse (Clearinghouse) creates a broad new pre-launch set of protections for Trademark Owners which is global in scope, far beyond the territorial limitations of any (and all) federally- and regionally- registered trademarks, and a huge new, innovative and broad policing and protection mechanism for existing trademark

owners as they set out to protect their trademarks in existing gTLDs.

We note that the Clearinghouse also provides efficiency for Trademark Owners, Registries and Registrars as the process of creating Clearinghouses for registered trademarks now shifts from each new gTLD registry and each individual prelaunch to One Company, One Database and One Filing, all overseen by ICANN. As NCUC and NCSG, we believe we gave our fellow ICANN community members exactly what they were looking for --- and absolutely as much as we could within the bounds of “Fair Use” and “Freedom of Expression” protections of words and noncommercial use – principles enshrined in the trademark laws of all communities and UN members.

Thus, we respond briefly to two issues debated very actively and extensively in the STI and raised again in the minority reports and comments: why only federally registered marks and why the specific formula of identical match?

A. The inclusion of only federally registered marks was a very conscious and purposeful one

We believe that the decision not to include common law marks in the final structure of the Clearinghouse was wise. Common law marks are particular in that they are recognized by a handful of jurisdictions across the world and, to this end, we foresaw that inclusion would create more problems and produce more burden (legal and administrative). At the same time, common law marks

constitute particular marks, since almost every word that exists in the everyday language can be claimed as a common law mark. To this end, previous registration practices endorsed by Registries have demonstrated that no uniform rule exists concerning common law marks, because of their very particular nature.

For these reasons, the STI deliberated and decided that it would be a better practice to provide Registries and Registrars with the discretion to decide whether they would include common law marks in their pre-registration and Sunrise processes. And the STI’s thinking did not stop there: acknowledging that some common law marks have to receive the recognition that has been given to

them by courts of adjudication, the STI has uniformly decided to include court-validated common law marks within the TC.

B. The inclusion of “identical match” technique as adopted by the STI comes from the IRT Report and incorporates far more than a mere traditional identical match.

Given the uniqueness of domain names, the STI went beyond the definition of identical match seeking to accommodate the situations where textual elements of the mark are replaced by special characters or other symbols. We believe that the STI was very reasonable in its approach, since under traditional principles of trademark law, identical match means the exact visual and lexical depiction of the mark and is not even as broad is it is defined in the STI report.

 Uniform Rapid Suspension System (URS)

We never believed that the creation of the URS was justifiable enough – but we went along when we realized that there might be a way to provide “expedited process” “at a very low-cost rate” of “clear-cut” and “slam-dunk” “cases of abuse.” Our goals were to make the URS process: fair, with enough notice, balanced for all, with a fast decision for the applicants (trademark owners) and subject absolutely only to the type of clear-cut cases of abuse that did not require the more lengthy evaluation of court or the UDRP.

The STI, after inordinate time and attention by some of the world leaders in this topic, truly made great strides towards doing so. The balance and fairness of the URS, as presented by the STI, is threatened by a string of requests from one party (namely those who envision themselves as the Complainants, the filers).

One of the main issues addressed during the pubic comments period related to the possibility of the URS to offer an automatic transfer of the domain name to the winning complaining party. This has also been an issue that was extensively discussed within the STI and we decided against it. The STI’s overwhelming majority position to not allow transfer of the domain name after a successful URS proceeding is correct and is in conformity with basic principles of justice and due process.

We need to bear in mind that the URS is not a stand-alone system of adjudication, but one that complements the already existing Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP, which was conceived more than 10 years ago, was structured under the premise to provide a limited range of remedies to trademark owners, namely the transfer or cancellation of the domain name. On the contrary, the URS was conceived as a mechanism, utilised by URS examiners, to evaluate domain name disputes under the more restricted premise of domain name ‘locking’. This was intentional. When the URS was proposed by the IRT as an additional protection mechanism for trademarks in the online world, the idea was that trademark owners would have at their disposal a two-step process – utilization of the URS for the ‘locking’ of the domain name and initiation of the UDRP to achieve its transfer or cancellation. Allowing, thus, an automatic transfer of the domain name after a successful URS process not only opposes the original idea behind the URS but it also displaces the already established process of the UDRP.

Moreover and given that the URS was not meant to allow the automatic transfer of the domain name – and this careful distinction between the URS and UDRP was not crafted by us, but by the IRT. They were correct: an expedited, “slamdunk” process should be very different from the UDRP. Registrars, registries, NCUC/NCSG and IPC agree. This issue was critical to our agreement with the

innovative URS concept.

We note that changing this procedural foundation – entertaining a URS transfer —will contradict the principles of justice and due process. The URS is structured upon the basis that each domain name dispute will be examined on the merits of ‘locking’ and not those of a transfer. In essence, what this means is that we cannot create a system, which promotes the incompatibility between process and remedy – it is contrary to principles of procedural justice to ask URS examiners to deliberate and issue decisions with one remedy in mind and then proceed to enforce a totally different one.

Thus, allowing automatic domain name transfer creates an extra-judicial step in the adjudication process, which is not authorised through the legitimization process of the URS examination.

It is for these issues of legitimacy and procedural justice that an automatic transfer of the domain name cannot take place within the URS.

 The effect of ICANN policies on trademark law

It is perhaps the first time that the balanced proposals of the STI team were in conformity with the basic principles of trademark law. This is an important development considering that all policies relating to trademark protection online should comply with the longstanding principles of trademark laws and regimes. The philosophy of trademark law is consistent with the idea of striking a balance between mark protection and fair use; it is consistent with the notion that essentially what is protected is the goodwill of a product and/or service; it is, finally, consistent with the idea that consumers are not confused, giving them autonomy, however, to determine the parameters of this confusion in line with basic principles of competition law.

The STI took all these issues into consideration when drafting its recommendations. We were all aware of the limitations of trademark law in the Domain Name System (DNS) as we were also aware of the fact that cybersquatters constitute a threat for online trademarks. We worked hard and struck a balance between the legitimate rights of trademark owners and legitimate rights of domain name registrants.

We therefore urge the ICANN staff to stay within the careful compromise crafted by the STI. It makes sense!

Dr. Konstantinos Komaitis University of Strathclyde,URS Drafter and author of the book “The Current State of Domain Name Regulation”

Kathryn Kleiman, Esq.NCUC Co-Founder, US Trademark Attorney, UDRP Drafter & URS Drafter

Robin D. Gross, Esq. Chair of NCUC, IP Justice Executive Director, and URS Drafter

Wendy Seltzer Fellow with the Silicon Flatirons Center for Law, Technology, and Entrepreneurship at the University of Colorado and with the Berkman Center for Internet & Society at Harvard Law School

To the rescue of the trademark community: Are trademark owners panicking in light of the STI recommendation?

2010-01-31T07:55:00.000-08:00

I have been thinking for quite some time now to write something on the process and the final report, produced by the Special Trademark Issues (STI) team. I was a member of that team, representing the Non-Commercial Users Constituency (NCUC) and - trust me when I tell to all you individual users – I really did my best to ensure that the end result would be far better than the previous IRT recommendation, the ICANN staff proposal – even the UDRP experience.

What we all need to understand from this exercise is that the STI recommendation was one of compromise. The STI was conscious that without a consensus policy document, we would go back to the Staff recommendations or even worse to the IRT. In an ideal world, I wouldn’t even allow ICANN to propose the creation of a policy document for the protection of the trademark community. In reality, we don’t need either policy recommendations. We avoid the pink elephant in the room, which is a UDRP amendment. But, unfortunately, we don’t live in an ideal world and, therefore, it was a question – do we let the trademark community take again the lead on this or do we engage in discussions and seek to balance (to the most feasible extent and given the political climate within ICANN) the new trademark law policy proposals?

I’ve just finished reading the comments posted on the ICANN website on the STI recommendation. This time around, there seemed to be a change of scene, as trademarks owners flooded the ICANN email servers, asking for more. Microsoft, the CocaCola company, Red Bull and Time Warner are amongst the few big corporations that submitted comments asking additions that the STI debated and rejected. Strong phrases, like the trademark community is ready to “roll up its sleeves to grapple this task” (Time Warner) are only indicative of the panic they face as we move towards proposals that seek to deliver justice and refrain from the current trademark-dominated culture. Where did trademark owners really get the idea from that it is all about protecting them – what about protecting legitimate domain name registrants from obvious and overt Trademark Lawyer abuse and trademark intimidation?

But, I have to admit – reading the comments of trademark owners, mashing up the same arguments was fun. Much of their language had Harry Potter reference – “He Whose Full Name Shall Not Be Spoken”. They hardly referred to terms like legitimate registrants or lawful domain name holders, as if they don’t exist or have any rights. So, let’s make another thing clear. There are legitimate owners out there; there are free speech advocates out there and they deserve appropriate levels of protection. So, dear trademark owners, legitimate registrants are not just “other participants” in the process – they are vital players just like you and they have a name: LEGITIMATE REGISTRANTS.

In line with the STI recommendations, the comments focused on two streams.

For the Trademark Clearinghouse, the trademark community is asking for inclusion of common law rights and any other form of protection you can possibly think of. But, the TC is not meant to be a rights’ protection mechanism – it is supposed to be an efficiency mechanism. Who is ICANN to replace the operation and functions of national offices? Who are the trademark owners to impose common law rights on every single jurisdiction around the world, which does not necessarily understand them? Why shouldn’t trademark owners bear the cost of it – it is a TRADEMARK Clearinghouse – who else should pay for it?

For the URS, the message sent by the trademark community was the following: let’s forget all about justice. Let’s transfer the domain name, even if we don’t design a system to do that and we already have one in place and let’s scrap off the appeals process, per WIPO’s recommendation, as it impedes the speed of the mechanism. Oh, and let’s make another thing clear: the UDRP is not expensive. It was meant to be a cheap mechanism and its filling fee is still cheap. Now, if trademark law firms charge their clients thousands of dollars for a simple complaint, that is not the system’s concern. Just change your trademark law firm, as a complaint should not cost you thousands and thousands of dollars.

I am not trying to advocate that the STI is perfect. However, it is a good document and one that, for the first time, has included the views of the Non-commercial users.

But, if you ask me: what we needed and we still nee is a UDRP amendment – there is really so much we can learn from the UDRP and so much we can fix. Of course, that would mean the trademark community getting exposed to the flaws of the UDRP and the fact that over the past ten years that have received expansive levels of protection.

The more I think about it, the more I realize on thing: we shouldn’t even be talking about trademark law here. We should rather re-name it to “Brand law”, because it is all about these big brands that consider the DNS as their own space.

With this in mind, I was happy to see some of the comments suggesting the unreasonableness of the trademark community and the whole scope of their demands. I was happy to read small businesses expressing their concerns and fears of the trademark domination in the DNS. These are the ones that also deserve our attention.

I guess the only message, if any, I would like to send with this post is: don’t believe that trademarks owners will lose with these new proposals. Whoever reads the comments, please understand that the trademark community is not only well-protected – it is actually over-protected and they should not be asking for higher levels of protection.

The Czech Arbitration Court is suggesting what in essence is a UDRP amendment

2009-12-12T02:53:00.001-08:00

Following the really bad precedent set by the World Intellectual Property Organization (WIPO) on the proposal for a fast-track UDRP process, the Czech Arbitration Court (CAC) has proposed changes that in essence amend the substantive and procedural rules of the UDRP. The Non-Commercial Users Constituency has submitted the following comments:

December 11, 2009

Dear ICANN Staff,

The undersigned members of the NCSG STI Drafting Team submit that the request from the Czech Arbitration Court (CAC) cannot be granted at this time for the strongest of procedural and substantive reasons.

The ICANN public notice for comments has misled the ICANN community and the public. This is not a mere change to supplemental rules for a mere alternative page limit. This is the adoption of an “Expedited Decision” analogous to the URS system, recently created by the STI. In October, the ICANN Board sent the URS back to the GNSO because **expedited decision making processes involve substantive rights and must be subject to the procedures and policy-making processes of the GNSO and its Council.*** The same concepts, and requirements, apply here.

There is nothing supplemental or merely procedural about these proposals. These proposals involve substantive change which will limit the rights of domain name registrants. As the just-completed STI URS recommendations show, expedited decision-making processes bring to bear serious and important issues of fairness and due process. The URS drafting team found that defining the elements of the UDRP claim precisely – and with the clear inclusion of safe harbors (the URS’ modelled on the Nominet example) constitute critically important factors in a rapid decision-making process.

Further, as the STI agreed, rapid reviews, especially in the case of defaults, should include additional procedures to protect and benefit the domain name registrants who may not even know the UDRP or URS proceedings are taking place. Such protections were placed into the STI’s just-completed URS -- but could not have been seen by the CAC which requested its recommendations (modeled on the IRT Report alone) prior to the results of the Board-requested STI work).

The UDRP is meant to be a uniform system and CAC’s amendment will operate against that uniformity. CAC is suggesting changes to create new substantive language that is not in conformity with the original scope of the UDRP. The uniformity of the UDRP is based on all UDRP providers conducting the same type of substantive review. The CAC new process breaks this uniformity seeking to create a whole new mechanism.

Thus, the CAC proposal raises serious competition concerns. It is unfair that one UDRP service provider should move forward with an advantageous new process that may lure complainants away from other forums. The UDRP was meant to be a uniform system, and accordingly, rapid decision rules, as they apply to existing gTLDs, must take place through the GNSO and apply equally to all providers.

The CAC proposal certainly will impact non-commercial and free speech domain names. As the CAC proposal does not include safe harbors for domain name registrants, its proposals do not include the balance of fair use and due process which constitute the basis of the newly-formulated and newly-recommended URS.

5. Further, the new CAC proposal is premised on inaccurate assumptions about default and domain names – to the substantive detriment of good faith domain name registrants. The CAC proposal presumes bad faith at default – despite the very short timeframe for notice and response that have characterized the UDRP since its outset (a timeframe far faster than court, and even than most administrative proceedings). The CAC proposals undercut the basic fairness of the UDRP, and the fairness and balance of the newly-introduced URS.

Overall, CAC is an accredited ICANN UDRP provider and should comply within a specific mandate. Despite CAC’s effort to present these changes as part of its supplemental rules, in reality they are substantive and will affect the future of the UDRP.

Such a submission, particularly by a UDRP provider so new to the UDRP process (in operation for only a year) and taking place while the URS was under serious consideration and substantive re-evaluation, will be viewed by all as unauthorized, unfair and seriously flawed.

Going Forward:
At a minimum, ICANN must reissue the comment period with a public notice that puts the public on notice that real rights – registrant rights – are being impacted under the UDRP pursuant to the change of policy being proposed by CAC.

The far better answer is for ICANN to strongly urge CAC to return to ICANN after a full review of the new URS. As the URS Drafting Committee, the STI, found and the UDRP Final Drafting Team before it, Registrants are entitled to the protections, fairness and due process. The STI 's URS came through a GNSO policy-making process. In addition, the URS proposal offers a heavily researched, carefully written and painstakingly edited rapid decision process from an expert and diverse group of trademark attorneys and technical experts representing Trademark Owners, Registrants, Registrars, Registries and individuals. It is a balance that adds to and rounds out the IRT recommendations, on which the CAC proposal was narrowly based.

The URS text, and its process of creation, should help inform and guide the CAC rapid decision process.

Overall, the procedural and substantive proposals suggested by the CAC must be legitimate revisions to the UDRP. These changes, and all major changes in the UDRP procedures, must be a part of ICANN’s bottom-up policy process undertaken through ICANN’s Policy Development Process (PDP).

Whatever happens next, this proceeding, as designated, must not continue. Suspending this proceeding for further work will benefit the entire ICANN community -- trademark owners, registrants, individual, registrars and registries, and CAC.

It also will serve the integrity of the ICANN process, and the UDRP, with a full and fair process.

Very sincerely yours,

Kathryn Kleiman, Esq.
NCUC Co-Founder, US Trademark Attorney, UDRP Drafter & URS Drafter

Dr. Konstantinos Komaitis,

URS Drafter and author of the book “The Current State of Domain Name Regulation” (University of Strathclyde)

Robin D. Gross, Esq.

Chair of NCUC, IP Justice Executive Director, and URS D

WIPO initiates individual fast-track UDRP process.

2009-11-02T12:07:00.000-08:00

In the midst of ICANN's decision to ask the GNSO to create proposals on trademark protection mechanisms, the World Intellectual Property Organization (WIPO) announced that it will launch a fast-track UDRP process (http://www.managingip.com/Article.aspx?ArticleID=2328845&LS=EMS332232).

At the Seoul meeting last week, the GNSO authorized the creation of a Special Trademark Interest (STI) team to come up with answers on the ICANN's staff recommendations on the Trademark Clearinghouse and the Uniform Rapid Suspension System (URS).

Today WIPO announced its intention to create a fast-track system, similar to the one the STI is working for the URS. “We are not proposing to change the UDRP policy or rules at all. Instead, using the existing framework, WIPO expects to offer a new and more efficient fast-track option based on adjustment to WIPO case practice under the UDRP", Erik Wilbers stated.

The WIPO move is flawed and creates various problems. Here is an account:

1. It is illegitimate: WIPO is acting on its own. It is not acting in its capacity as an inter-governmental organization nor as an ICANN-accredited center. It creates and suggests policy contrary to its role as a service provider. (Would we accept the same by the other ICANN-accredited centers?)

2. Non-transparent: What is the process WIPO followed to create this fast-track system? Which cases will the system cover? What are the parameters of the new system and how will it fit within the UDRP? These are legitimate questions that WIPO has not disclosed.

3. WIPO is justifying the system on loose and arbitrary conclusions: WIPO's process and the conclusions and justifications that lead the organization to create this policy are not evident. Center Director, Erik Wilbers stated: "The domain name system has evolved. We have seen automated registrations, parking and pay-per-click and privacy issues. In addition, we have seen vast increases in domain name registrations. The language rules have also been abused in some cases.”

4. It is non-accountable: WIPO has not consulted all the interested parties. While ICANN should be applauded for following its buttom-up process by creating the STI, WIPO is not seeking the views of the Internet and trademark community.

5. It sets a dangerous precedent: WIPO wants through this fast-track process to deal with the 75% of cases that are not defended. This creates a dangerous precedent and considers all defaults bad faith, continuing the dialectic of the UDRP.

6. It will have a negative impact on registrants: Despite what WIPO states, the new process will negatively impact the already fragile rights of respondents. What about 'trademark lawyer abuse' issues and due process?

7. It will encourage bias: WIPO is known for its bias and the wide discretion of its panels. This process will magnify these problems as trademark owners will use and abuse the system to their advantage.

8. It will suppress free speech: The new process will encourage the creation of a solely commercial DNS. Free speech will be in danger.

9. The system will be gamed: Trademark owners will use the fast-track process and if they lose they will proceed to the standard UDRP.

10. It is anti-competitive: The WIPO process will place the other centers out of the competition. Trademark owners will prefer the new, fast WIPO process - we should anticipate a significant decline in their case law.

ICANN should send an immediate, urgent cease and desist letter to WIPO to withdraw from this process, and wait for the GNSO to submit its recommendations to the ICANN board. If WIPO does not comply, ICANN should proceed to revoke WIPO's UDRP accreditation.

Special Trademark Interest (STI) team

2009-10-24T19:37:00.002-07:00

Dear bloggers,

just to give you an update. ICANN - via the GNSO - has authorized the creation of a Special Trademark Interest (STI) team, tasked to tackle trademark issues. Constituencies are expected to select their representatives to discuss these issues and reach a consensus. The team will most likely be comprised of 12 people from a divergence of groups.

More updates to come soon.

ICANN is sending trademark issues back to the GNSO

2009-10-21T09:53:00.000-07:00

Here are some initial thoughts on ICANN's response to the IRT proposal, published a little earlier this month. Please bear in mind that ICANN is requesting GNSO¹s consensus view on the Trademark Clearinghouse and the Uniform Rapid Suspension System (URS). These are the views of myself and Kathy Kleiman and a reflection of our sense of events. NCUC will be meeting at length in Seoul to discuss the issues and develop our position for moving forward. To see the new documents, drafted by ICANN staff, please go to [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-u...] for Uniform Rapid Suspension Service and [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-t...] for Clearinghouse.

First, some great news. The Globally Protected Marks List (GMPL) is completely gone (or so it appears at this stage). The NonCommercial Users Constituency (NCUC) was against the GPML from the beginning and in White Paper, Kathy Kleiman and myself submitted to ICANN (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...), we further elaborated on the dangers of proceeding with the GPML.

The IP Clearinghouse is now re-named Trademark Clearinghouse. I consider this to be a great development. The term 'IP' encompasses other rights (patents, copyright, etc) and this is not the role of the Clearinghouse ¬ nor should it be. The Clearinghouse is just a repository and ICANN was correct in recommending a new, more restrictive name, following our White Paper (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...).

The ICANN proposal did not follow NCUC¹s recommendation for regional clearinghouses. This was an important issue for nations and for IDNs. One entity cannot know the trademark laws and practices of all countries; but regional registries will understand the laws and nuances of trademark practice in the countries of their region. We expect to see some attention on this issue from GAC members at this meeting.

One clear problem of the Trademark Clearinghouse is its creation of a new, a very new, right to a global common law mark. A common law mark, which is trademark protection although there is no registration, is a very unusual right. It exists largely in common law countries, such as the UK and US. Very few countries allow trademark rights absent trademark registration (e.g., though a national Trademark Office) and even those countries with common law protection have national trademark registration (which all serious trademark registrants will use). The new proposal is problematic in that it allows any name written or expressed on a handkerchief, on a label, on letterhead to be listed and thus to gain global protection – absent any proof of national protection. That's a real problem.

The URS is a different story. It has gone worse.

As always, we have the same question: why create a new system and not stick to the UDRP and amend it accordingly? The UDRP was designed for quick, cheap takedown of domain names. The URS is too quick, too cheap and new proposal fails even to limit cases to the “egregious cases” of domain name use that the IRT had highlighted.

NCUC and the White Paper submitted to ICANN mentioned that the creation of the URS could address Œserial cybersquatting¹, a proposal that was not taken into consideration (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...). So, the system will be open to gaming and abuse. The idea is for the URS to 'lock' the domain name rather than transfer or cancel it, as it happens with the UDRP. But, here is a possible outcome of this: trademark owners will use the cheap and fast URS to 'lock' the domain name and then proceed to the UDRP (submitting the URS decision as evidence for bad faith) and get transfer of the domain name.

The URS continues to use and justify itself in the dialectic of the UDRP. The new proposal says that the URS standard is similar to the UDRP, but the burden of proof is higher – but it is much, much lower.

Moreover, there is no mention on the legitimate rights or interests of domain name holders and the deadlines are too short ¬ 14 days as opposed to the UDRP¹s 20 days ¬ although there is a possibility for a seven-day extension. Trademark owners will game the system, file on Christmas Eve, and a domain name will be lost before the registrant even knows it is of concern. This should be a huge problem for all registrants: noncommercial, commercial and individual. It's simply not fair; it's not due process.

Further, the respondent is required to submit a statement on truth and accuracy of the submissions, while the trademark owners appears not to be under the same obligation. Why?

Also, beware, one error on your response, and you lose. The new URS proposal also the definition of Œdefault¹ to include non-compliance with any the filling requirements-- even minor, even by a registrant representing himself or herself. This is unfair, considering that mistakes are human and do not necessarily indicate an attempt to abuse the system. Creating such a rule, under the default definition, which is already subjected to UDRP misinterpretations, creates a very bad precedent.

Basically, the URS, as revised, preempts, replaces and displaces the UDRP without any of its balance or fairness. It does not focus on egregious cases, but all garden variety disputes – and gives the trademark owners a nearly automatic win.

This can't be the way we want to open new gTLDs. And mass freezing of domain names under the URS can't be the way we can expect registrants to flock to the new gTLDs registry applicants want to offer.

The IRT Proposals of an IP Clearinghouse Dangers/Problems And Innovative Solutions

2009-09-07T13:49:00.000-07:00

Paper shared on August 7, 2009

Introduction

Under the IRT’s proposal, the IP Clearinghouse takes ICANN far outside its scope and technical mandate. It is an intellectual property structure that has no barrier to creation in the private sector and is consistent with the types of private sector services, including monitoring and alert, now being offered. Moreover, the creation of such a superstructure of ICANN, a single monolith, will attract such lobbying from brand owners that the rollout of new gTLDs may be further delayed.

What the IRT specifically proposes:

· The IP Clearinghouse must be capable of holding data relating to the legal rights of trademark owners, including both registered rights and unregistered rights.

· The data should be submitted by trademark owners directly, or through a registry or registrar, to the IP Clearinghouse together with a reasonable fee.

· Trademark owners must grant a non-exclusive, royalty-free, sublicensable license to their data to ICANN, which will in turn sublicense it to the IP Clearinghouse.

(I think we should move Dangers/Problems up here)

What we recommend: Market-based Private, Regional Trademark Clearinghouses (TMC) - following the WTO model of regional Clearinghouses for trade agreements.

Why opt for Regional Trademark Clearinghouses (TMC):

1. Regional clearinghouses can relate better and respond more efficiently to the differences of trademark laws across the world;

2. Regional clearinghouses will be able to respond and better protect signs of cultural diversity and cultural significance. (Words like ‘the Acropolis’ or ‘the Taj Mahal’ do not have the same historical significance for Greece or India as for the rest of the world. This will also be in line with WIPO’s ongoing work on ‘Traditional Knowledge, Genetic Resources and Traditional Cultural Expression/Folklore”).

3. Regional clearinghouses will work better with national Trademark Offices, which, essentially, are the most appropriate sources to guide this discussion – it is not ICANN. It is the national Trademark Offices that can best work together on a regional basis to support regional TMCs. Further, virtually all national Trademark Offices nowadays maintain databases with their trademark listings. While only some provide access to these databases openly to the public online, they could make access easily available to private TMCs in which they had a hand in creating and/or running and/or overseeing.

4. Regional clearinghouses will be less responsive to abuse, due to their familiarity with the validity of trademark registrations.

5. Regional clearinghouses will also tackle better the concerns over IDNs. To serve IDNs, the private, regional TMCs are in the best position to meeting the needs of trademark owners working in their own languages and scripts.

6. Regional clearinghouses are in conformity with ICANN’s mandate for promoting competition.

Dangers/Problems with the IRT Clearinghouse Proposal

· ICANN has neither scope nor authority to create a single, monolithic, undefined superstructure to adjudicate legal rights. The creation of such a legal regime falls completely outside the function of ICANN as set out in the foundational White Paper.

· Even if ICANN had the authority – which it does not – it should not want to create a single, monolithic IP Clearinghouse because such a process will change the nature of the community ICANN serves. The jockeying for position in the IP Clearinghouse, the hope of extending its reach to even the dimmest trademark and other intellectual property right, will lead to a run on ICANN by trademark owners. This discussion, debate and jockeying for rules of the IP Clearinghouse should happen outside the bounds of ICANN.

· Under its current structure, the Clearinghouse will be open to abuse. On page 13 of the recommendation, the IRT states: “It can also perform similar functions for other types of RPMs besides those recommended by the IRT at this point”. This provides too much discretionary power to the administrator of the Clearinghouse, which can easily lead to abuse.

· There are too many gaps with the current IPC proposal, which should be anticipated that they will increase costs (administrative and external), lead to litigation and create bureaucracy and confusion.

· The IRT report allows any trademark – both registered and unregistered – to be listed. This is wrong – any geographical name, personal name, ‘reading book’ club name will be able to be listed. (Indirect Horizontal Abuse)

· Inclusion in the Clearinghouse of any rights that do not constitute valid federal or national trademarks will require an intense validation process. This is not cost-effective for either ICANN or the registries/registrars.

· The validation concerning established legal rights falls outside the scope of ICANN.

· It is unclear from the recommendation the kind of affidavits trademark owners are expected to submit to the Clearinghouse. There is no mention on verification processes on the validity of these affidavits.

· The Clearinghouse is meant to reduce costs and be efficient. Under this proposal it fails, since it suggests a structure that depends much on ICANN, registries and registrars. Similarly, unfamiliar ICANN practices, combined with non-uniform registry rules, will impair the efficiency of the IPC.

We propose the Private, Regional Trademark Clearinghouses (TMCs) meet the following standards:

· TMCs initially hold data relating to the valid trademark registration issued by a federal or national jurisdiction that conducts substantive examination of trademark applications prior to registration.

· TMCs should not accept data in respect of trademark registrations that relate to what we call ‘domain name services’. The USPTO[1] and the European Union[2] have both declared the invalidity of such registrations.

· The data should be submitted by trademark owners directly to the relevant TMC.

· ICANN foster a TMC in each region. The TMC be encouraged to provide detailed information about the trademark, including the category of goods and services in which the mark is registered. ICANN might further foster a common database search mechanisms for registrars to search trademarks by country, date of registration, international classification number (where applicable), etc. (following the WTO model for trade agreements, http://www.wto.org/english/news_e/pres09_e/pr548_e.htm).

· Trademark owners should submit to the TMC as much relevant information as possible, which should include, but not limited to, proof of valid trademark registration(s) as authorized by National Trademark Offices.

· TMCs shall be operated by neutral service providers that are not currently in a direct contractual relationship with ICANN;

· TMCs must be technically state-of-the-art and their daily operation must enhance the rapid provisioning of domain registrations.

· TMCs must be scalable. For example, they should be able to accommodate identical trademarks registered under different classes of goods or services or in different trademark registration offices, recognizing the territorial nature of trademark law and international classification systems.

· TMCs must be able to accommodate all types of registered trademarks, including word marks and device (logo) marks that contain a word element from every trademark registration office in the world.

· TMCs must be able to deliver fast, accurate information in a standard format using a state-of-art technical platform that is secure and robust.

· TMCs must possess knowledge and expertise in the field of trademark law, processing efficiency, project management skills and risk management skills.

· Listing in the TMC should be optional. It is recommended for registrars and registries to work with the TMCs appropriate to their languages, regions, scripts and community.

· TMCs must also be capable of holding data in the original language and not merely a translation, accommodating this way the particularities of IDNs.

Note: We suggest as a model for future Trademark Clearinghouses the market-models of today, including PriceWaterhouseCoopers for the <.eu> sunrise period. Information can be found: https://www.maxnet.eu/conditions/en/final_presentation_road_shows.pdf

Kathryne Kleiman, Esq.

Trademark Law Attorney, UDRP Drafter

Dr. Konstantinos Komaitis,

Law professor,

Law School,

University of Strathclyde, Glasgow, UK

[1] See Paragraph II.E of USPTO Examination Guide 02-99, http://www.uspto.gov/go/tac/notices/guide299.htm

[2]http://oami.europa.eu/ows/rw/resource/documents/CTM/legalReferences/partb_examination.pdf

The IRT Proposals of a Globally Protected Marks List (GPML): Dangers/Problems And Innovative Solutions

2009-09-07T13:48:00.000-07:00

Paper shared on August 7, 2009

Introduction

We spent a long time trying to understand what the IRT wants in the GPML. So, let’s start with how the IRT envisions the GPML – “the IRT recommends the creation of a Globally Protected Marks List to provide protection to Globally Protected Marks at the top and second levels”. [IRT report, p.16)

What the IRT specifically proposes:

Trademark owners that wish to have a mark included on the GPML must provide to the Clearinghouse documented evidence that is capable of being verified of the criteria listed below. After the initial gTLD application round, these criteria should be evaluated and, if appropriate, revised.

The IRT no longer provides the ICANN community with any specific recommended criteria about registration numbers in the various regions, and appears to be at odds within the Committee as to the answers.

Further, all trademark registrations must have issued on or before the date that GPML applications are first accepted and must be based on trademark registration applications filed on or before 1 November, 2008, and the second level domain name for the GPM’s principal online presence must be identical to the GPM. [IRT Recommendation, pp. 16‐7]

Dangers/Problems with the GPML Proposal:

1. Globally Protected Marks (“GPM”): The IRT report seeks to create an alternative, new category of trademarks that do not fall within the famous/well-known category.

2. GPMs will not necessarily involve famous marks, and may not even include famous brands – however, the IRT’s GPMs could include very esoteric scientific and technical terms that are currently used worldwide.

3. Thus, these new GPML marks will be even broader in their numbers and have protection far beyond that of today's well-known brand names.

4. The new GPML marks will have a ‘supernova’ status, and for the discussion below, we call them 'supernova trademarks.'

5. The protection of these supernova marks will be excessive within ICANN.

6. The scope of protection of these supernova marks outside of ICANN is unknown, and potentially quite dangerous.

Note: as an academic specializing in the UDRP and studying its untended consequences outside of ICANN, Dr. Komaitis shares his expert opinion:

"Unfortunately, we cannot tell you much about the scope of protection for ‘supernova’ trademarks, how courts view them, how academics understand them – they don’t exist. Even in the case of famous/well‐known marks, which welcome an additional layer of protection compared to ones not classed as famous, the fame of the mark does not grant its owner immunity against any other use. The GPML will grant this sort of immunity – it will allow owners of marks to exclude words and monopolize the domain name vocabulary.

"The IRT has touched upon (and is asking ICANN to canonize) an issue, which is more controversial than the completely baffling, unchartered and confusing path of famous marks. In the US, as in most parts of the world, one cannot tell it is a famous mark unless the court says so. At an international level there is no single list, no consensus and no agreement on that very issue."

In brief:

· The GPML will exorcise certain words from the DNS as it promotes protection of strings of characters, rather than protection of the mark and its association with goods or services;

· The GPML will create an alternative, new category of trademarks that do not fall within the famous/well-known category;

· The GPML will include very esoteric scientific and technical terms that are currently used worldwide

· The GPML will create ‘supernova’ marks.

· The GPML will create scope of protection of the supernova marks beyond that of even what globally famous brands should enjoy within ICANN;

· The GPML overrides the fundamental legal principle that only courts can determine whether a mark qualifies as “famous”;

· The GPML will help a trademark owners elevate the status of their trademarks to the protection of "text strings," not trademarks -- truly unprecedented levels;

· The GPML will not further consumer protection;

· And the GPML will violate a fundamental norm of Free Speech and Freedom of Expression -- the prohibition on its ‘prior restraint’

Additional Dangers/ Problems for ICANN of Overseeing a GPML

· Harassment - trademark owners will lobby ICANN incessantly for the GPML bars to be set to a point where their company's trademark qualify

· Liability - trademark owners not listed in the GPML may sue ICANN for inclusion for and seek damages for the costs of not being included with the special privileges (envisioned and unforeseen) that the GPML will deliver

· Defend ICANN from potential lawsuits from trademark owners losing their domain name due to GPML hijacking (abuse of a granted GPML listing)

· Defend ICANN from potential lawsuits from free speech advocates

· Process appeals related to the GPML;

· Administravia – e.g. processing addition/deletion from the GPML at regular intervals, including performing assessments for GPML listing candidates.

Conclusion

The issue of globally famous marks is one which has wracked the brains of those who created ICANN, those who worked within ICANN since its inception, and today. When faced with the question of famous marks, the White Paper turned to WIPO.

When faced with the question of famous marks protection in the gTLDs, Working Group B of the DNSO also turned to WIPO -- requesting a list from which to base its findings.

All have turned outside of ICANN -- for its not within the technical scope and mission to create such a list. ICANN must wait until the global community has created standards, and a list, of globally famous marks.

We join NCUC, ALAC, eNom, and many others, even within the IRT, who say that the GPML is clearly a proposal of the IRT that cannot go forward and cannot be fixed.

We hope to make you see that implementation of such a proposal could backfire and fragment the registration of domain names. The degree of protection that trademark owners seek through the GPML does not exist in the offline world.

Kathryn Kleiman, Esq.

Trademark Law Attorney, UDRP Drafter

Dr. Konstantinos Komaitis,

Law Professor,

The Law School,

University of Strathclyde, Galsgow, UK

The IRT Proposals of URS Dangers/Problems And Innovative Solutions Of this Major Battlefield Issue

2009-09-07T13:47:00.000-07:00

Paper shared on August 7, 2009

What the IRT Proposes:

The IRT proposes a system to take away domain names which it hopes will:

l monetize off the value and goodwill of a brand,

l distribute counterfeit goods,

l malware and other malicious software,

l phishing attempts, and

l adult content (IRT Final Report, page 25).

The IRT Committee states that its intent is to “supplement and not replace the UDRP,” and “address cases of abusive use of trademarks where there is no genuine contestable issue as to the infringing or abusive use (i.e., not a fair use or commentary situation nor a situation involving questions of whether the registrant is or is not authorized or selling, for examples, legitimate, non-counterfeit goods). (IRT Report, p. 25)

Yet, their proposal is far broader than the types of conduct they actually seek to limit.

Dangers/Problems with the URS Proposal:

In its Joint Statement on the IRT Report from members of ALAC and NCUC, the two groups jointly presented the following severe critique of the URS:

“We have serious issues with the Uniform Rapid Suspension Service (URS)

as proposed. For instance, the URS mechanism subverts conventional

UDRP practice as it gives entirely insufficient time for notice to the

registrant of the pending dispute. Thus, the registrant is unfairly limited

in his/her right of response and the process is missing the fundamental

principle of due process.”

In brief, the URS , if implemented, will:

Replace the UDRP. Faster and cheaper, and without anything to restrict its use to the truly egregious cases, all trademark owners will use the URS, only turning to the UDRP if they lose the URS.
Provide fundamentally unfair notice and response time. It assumes email never goes into SPAM filters, the people never take vacation, and that lawyers never need time to prepare a response. The procedural rights of domain name registrant will, thus, be severely impaired.
Game the URS process entirely in favor of the trademark owner lawyers. The URS games and manipulates the system completely in favor of the trademark owner – whose attorneys can spend infinite time and money on preparing the filing, and then choose, for instance, a filing date in mid-August or mid-December.
Presume the guilt of all respondents, all domain name registrants. “Nowhere in the Benchmark checklist or in the URS is consideration given to the 'proper' respondent. Every respondent is presumed to be guilty upon presentation of the complaint and any expense incurred is foisted upon the respondent without rationale [sic] or comment.” (Keating written comments, p. 12). Further, incomplete answers, even if unintended or inadvertent, regardless of how complete, are deemed a default. The rights of registrants should never be disregarded.
Suppose a clear standard where none exists; disregard rigid standards of legal evaluation. Simply put, the cybersquatting question is not as easy as the IRT Committee would suggest. The “we know it when we see it” approach by trademark owners is disproved by UDRP and court decisions:

· Strick Corporation v James B. Strickland Jr.: “Nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they would lay claim to all .com domain names, which are arguable ‘the same’ as their marks. The Court may not create such property rights in gross as a matter of dilution law. Trademark law does not support such a monopoly”.

· Banco de Chile S.A. v. Eric S. Bord, Esq: “The clear statement of Section 4(a)(iii) is that the Complainant must prove both bad faith registration and bad faith use. This distinction was not casually made by the UDRP drafters. It contrasts with the terms of US Anticybersquatting Consumer Protection Act (which was being enacted at the same time as the UDRP), which allows a claim based on either bad faith use or bad faith registration. Twisting this very clear requirement on its head, the majority says “non-use” can equal “use” […] Here, there is no evidence of any specific intent to prevent the mark owner from reflecting its mark in a corresponding domain name. To deprive evidence of intent from the simple fact of registration is to ignore the requirement of finding intent. To apply 4(b)(ii) in cases where, as here, the mark owner already has numerous domains corresponding to its mark is illogical. The mark owner has no right to very possible variation on its theme […] it has a right to use its mark in some corresponding domain name, not all of them. Again, cybersquatting is an act that shows particular harm to the mark owner, not some general disadvantage”.

Further, Paul Keating's written comments strongly show, from a registrant attorney perspective, that the IRT fails to provide any quick or clear test for the egregious conduct it seeks to prevent:

“Rapid Solution?

The need to rapidly take down clearly abusive sites is clear. However, the URS suspension will not occur until after the ultimate decision. No deadline is imposed on the decision. Given the complete issues that must be addressed (with a genuine issue of material fact exists) it is unrealistic that the remedy will be any faster than the average default UDRP. It is not a 5-minute oil change solution.” (Keating, IRT Comments, p. 9).

The so-called crisis of cybersquatting does not exist. One element of consensus in Sydney, among the entire assembled non-IRT community, was that overall UDRP cases, relative to overall domain name registration, were going down.

We cannot stress enough the disastrous consequences of moving forward with the URS as drafted. If ICANN moves forward with the URS, it will:

- displace a system created by a multi-stakeholder community with one created by only one community (trademark community);

- disregard 10 years of work and experience in the UDRP;

- endorse a very flawed litigation system created from scratch by one biased community;

- displace and bypass the GNSO on a serious policy issue;

- miss the input of those registrant attorneys and academics, who should be involved in drafting such an important dispute proceeding;

- send certain registrant groups to Congress, and

- destroy the GNSO process.

Adoption of the URS “as is” threatens ICANN and its grassroots based system, will lead to explosion within ICANN, and unfair and unjust decisions which will haunt ICANN for years to come.

What We Recommend:

For the URS, we support two recommendations. The first is quick, simple and clean and provided by registrant attorney Paul Keating.

Don't adopt the URS -- Do Modify the UDRP for new gTLDs in a quick, clear way to simply incorporate the goals of the URS – the Keating Answer.

Paul Keating, longtime registrant attorney, states: “I am entirely opposed to the URS. I feel that the primary concern of the TM holders (getting sites shut down quickly and at an efficient cost) can be handled entirely as follows:

1. Amend the UDRP to provide that if a UDRP is filed, the respondent has a period of time to elect any of the following:

a. Defend

b. Surrender the name.

“Electing to defend requires a nominal payment by the REGISTRANT. This acts only to keep the webpage operating pending the final UDRP decision. Failure to file an election to defend does not equate to a default. AND a registrant who did not file an election to defend can come back at any time during the UDRP process and file one, pay the fee and get the domain back up and running. This protects the registrant who may not have seen the notice.” (Keating, Email to Kleiman & Komaitis, 8/5/2009).

Keating's position is reasonable and accurate. His recommended “quick fix” to the UDRP, if approved by the GNSO, would be consistent with GNSO's past work, in keeping with UDRP history, and further, fulfill the needs of the IRT as set in the IRT report. It also would resolve the deep substantive and procedural concerns of the dozens of individuals, businesses and organizations who opposed the URS in the public consultations and written comments.

Keating's solution is a reasonable place to stop and a solution that should be broadly acceptable to the ICANN community.

The second proposal is not as simple, but provides a middle ground. It was proposed by eNom's Richard Tindal in NYC and London and provides a narrowly-tailored focus to the URS that seems to a) satisfy the immediate needs of the IRT Community, and b) not threaten the legitimate rights and interests of good faith registrants by pulling them into a fundamentally unfair process:

II. Preventing the Conduct the IRT Really Intends: Egregious Conduct

(A Possible Middle Ground)

The IRT Committee was very clear in its meeting with NCUC representatives in Sydney: their intent in the URS is to block and/or quickly take down the serial cybersquatter. In this context, the report of the IRT makes much more sense. Serial cybersquatters, especially those who register dozens or even hundreds of variations of well-known marks as domain names to monetize their value with pay per click websites

- are not engaged in fair use;

- are not engaged in a commentary situation; and

- are not in a situation involving questions about whether the registrant is or is not authorized or selling, for example, legitimate, non-counterfeit goods. (All examples of situations the IRT does not intend the URS to encompass). (IRT Report, p. 25).

Therefore, the recommendation, appropriately, of eNom, is to focus on this conduct. If ICANN wants to take steps to prevent serial cybersquatting, then the URS should be narrowed down to address those concerns.

As eNom stated, ICANN can do that by requiring the URS filing to have:

A. A minimum threshold of 26 domain names for a single trademark (with the trademark owner allowed to show that various entities are really controlled or operated by the same party);

B. A minimum threshold of 72 names for multiple trademarks held by the same trademark owner (e.g., the 400 trademarks held by Time Warner) (with the trademark owner allowed to show that various entities are really controlled or operated by the same party); and

C. Domain names identical or confusingly similar to a mark in which the Complainant holds a valid trademark registration for the word mark issued by a jurisdiction that conducts substantive examination of trademark applications prior to registration.

(The “word mark” threshold is critical as design marks do not provide trademark owners with rights to the use of the word outside of the colors, graphics and pictures for which the trademark is sought.)

In this case, the threshold itself, if met, goes a long way to showing the bad faith and bad conduct of the registrant. It is a rapid takedown process for serial cybersquatting – and a direct and innovative solution to the problems raised by the IRT.

A Further Step: Rapid Takedown of Criminal Conduct

We note that the other egregious conduct raised by the IRT Committee in the IRT Report is not solely trademark infringement – it is criminal conduct in its own right. To “distribute counterfeit goods,” to provide “malware and other malicious software,” to engage in stealing PIN numbers and other “phishing attempts” and to post “adult content” under a children's product name to lure underage visitors to a pornography site is criminal conduct!

In such instances, however, trademark issues are secondary -- it is the illegal content of the website itself that creates the cause of action by which the conduct against the domain name and website may most rapidly proceed.

The rapid takedown of domain names involved in criminal matters is the current work of the Anti-Phishing Working Group (APWG). They have procedures in place today, and are formalizing the more extensive Abusive Domain Name Resolution Suspension Process.

Further, every registrar and registry we talked with has “Rapid Takedown Procedures” for criminal conduct. It is a problem with a known solution – and one for which the whole UDRP does not have to be modified or set aside. These are not exclusively or even substantively trademark infringement issues, thus ICANN’s approach to this issue can be narrow, specific and targeted to the serial cybersquatting cases.

Recommended Next Steps:

We strongly recommend that ICANN quickly convene a multistakeholder group to:

- review the two options; and

- determine which option to move forward on.

Should the group choose to move forward with the narrowly-tailored URS, we recommend that ICANN move to quickly convene a UDRP Review process through the GNSO. The IRT discussion has shown that there is much to discuss and improve in the UDRP and 10 years of experience on which to base the discussions. Prior to the delegation of any new gTLDs, the GNSO could be well on its way to reshaping a fuller, better-informed and more tightly drafted UDRP.

Kathryne Kleiman, Esq.

Trademark Law Attorney, UDRP Drafter

Dr. Konstantinos Komaitis

Law Professor

University of Strathclyde,

Glasgow, UK

Meeting with ICANN Staff, August 7, 2009

2009-09-07T13:40:00.000-07:00

Dear bloggers,

right before going on my holidays, I had a very interesting meeting with ICANN staff in order to discuss the IRT report. Over the past few months, I have had the pleasure of working with Ms. Kathryne Kleiman - drafter of the UDRP and trademark law attorney - and we both worked very hard to propose solutions that ICANN would find interesting and innovative.

The ICANN staff paid careful attention to our submissions and asked for a lot of questions. We explained to them the law and the impact the IRT report has and will have upon traditional notions of trademark law.

I will post all our White Papers (IP Clearinghouse, URS and GPML) to this blog. They are also posted on the ICANN website. Due to their length of analysis, I will post each one of them separately.

IRT Recommendation and ICANN's Inconsistencies

2009-08-04T04:20:00.000-07:00

It has been a very interesting experiment: the way ICANN has, so far, approached the addition of new gTLDs and the subsequent expansion of the Root. Where almost a year ago the new gTLDs were the contested issue, over the past three months (basically after the ICANN meeting in Sydney and up till now) the debate has shifted to ICANN's proposal on the Rights Protection Mechanisms - basically, the always controversial issue of trademark protection in the DNS. In all truth, it is not really ICANN's proposal per se; the IRT was an initiative of the Intellectual Property Constituency (IPC) and after today (August 4, 2009) it is officially dismantled.

Here is the weird thing, however. Although the meetings in London and New York focused on the trademark protection and the IRT report, the agenda of the similar meetings in Hong Kong and Abu Dhabi does not list any members of the IRT team (http://www.icann.org/en/topics/new-gtlds/consultation-outreach-en.htm). Why is that?

To be honest with you - I am not sure. The panel in both meetings (Abu Dhabi and Hong Kong) as well as the presentations were dominated by the ICANN staff. Does this mean that trademark protection was not so much discussed? This is also unclear. People have twitted and re-tweeted (http://twitter.com/kkomaitis) about remote participation not being available in Abu Dhabi and I know for a fact that remote participation was difficult in all previous meetings.

I really have many legitimate questions here: why was it so difficult for ICANN to ensure public participation? If the four meetings were meant to be the on the same issues, why the change of agenda and speakers in the last two meetings? Is ICANN seeing the western hemisphere's issues (NY and London meetings) different than the ones of the other part of the world? Why this inconsistency?

I find it surprising that this process has not stopped and the more I am engaged the more I understand the real power of ICANN. Especially, with the issue of trademark protection and the IRT recommendation, the whole process is purely and simply: ILLEGITIMATE.

STatement on the ICANN NCUC's Charter Proposal

2009-07-22T09:36:00.000-07:00

Wednesday, July 22, 2009

Individual Statement on ICANN NCUC’s Charter Proposal

Dear ICANN,

It is with great disappointment to see the ICANN Board suggesting a structure for the Non-Commercial Users Constituency (NCUC), which is a result of top-down rather than bottom-up coordination. I am also dismayed by the fact that NCUC was the only constituency having been asked to amend its charter so as all other constituencies within ICANN did not feel threatened by the support NCUC has been receiving over the years. Why else would you ask NCUC to amend a charter that has been signed and supported by approximately 80 organizations and individual users across the five regions of the world?

The new model you have suggested is highly problematic and you know it. It is as if ICANN wishes to create within NCUC – the only non-commercial constituency within ICANN able to preserve human rights and non-commercial interests – an internal conflict, which will, subsequently, disunite its members. The strength of the NCUC is that, despite the fact that sometimes we may share different priorities and approaches, in essence, we – as one, conjoined unit, advocate and support the same philosophy: the protection of non-commercial interests on the Internet. We are the civil society in ICANN and our job is to promote the needs of individual users, as expressed by themselves and their representatives. What we all share in common in NCUC is that we want to balance the influence of commercial interests within ICANN and engage in an active dialogue with the other constituencies. We want to find the best possible solutions for the Chinese blogger who fights for his voice to be heard, the child who is daily exposed to various illegal Internet activities, the parents who are concerned about their children – we are here to talk about all those people who should be our first priority – the simple Internet user. The charter we originally proposed would ensure that all voices within the NCUC would be heard; our charter promoted transparency and dialogue; it sought to bring together than distance our philosophies – isn’t that what democracy is all about?

You have to understand that our vision for NCUC is not driven by commercial interests and monies. We have tried to come up with the most democratic solution that will represent and respect the views of all parties concerned. And, I believe we have achieved it. Look at the support that our charter has received – you cannot possibly overlook that. We are reasonable and our proposals are equally reasonable. The fact that they do not conform to other interest groups within ICANN is unfortunate but, at the same time, it is not a legitimate justification for rejecting and re-writing our proposed charter.

I strongly urge you to re-consider the benefits of NCUC’s proposal. Rejecting our proposal will result in transmogrifying a constituency, currently operating under democratic and just procedures, into a body, where lobbying will proliferate. The way you have envisioned NCUC, we will have to spend all our efforts in political manoeuvring rather than in tackling contentious and fundamental issues that are of great concern to all of us. We can really help you, if you let NCUC and its members continue to do their jobs with the same passion and principles.

Thank you.

Sincerely Yours,

Dr. Konstantinos Komaitis,

University of Strathclyde (Law School),

Member of NCUC.

Internet Users Are Being Threatened: The IRT Meeting in London

2009-07-16T09:44:00.000-07:00

I’ve just returned from ICANN's new gTLD meeting in London, where the Implementation Recommendation Team (IRT) presented its skewed vision of protection mechanisms for new gTLDs. London was the second stop of a consultation process, which started in New York and will finish in Abu Dhabi in the beginning of August (http://www.icann.org/en/topics/new-gtlds/consultation-outreach-en.htm). The idea behind these consultations, which are open to every interested party, is to give the opportunity to the IRT team to present its recommendations and receive comments. But, in reality, things are far from simple.

The report - both procedurally and substantively - has a lot of problems and legitimizing it will be a difficult task (even for ICANN). Taking into consideration that the composition of the IRT consists mainly of lawyers of big corporations (Time Warner, Richemont), the report will inevitably be biased towards trademark interests. And, it is. Hearing the IRT team talking about the report, there were times that I almost believed they are fighting a larger cause. Their language was careful, their wording well-articulated and they had the ability to answer almost every question. This to me meant only one thing: if one is not familiar with what has been happening over the past ten years, one could easily support the report.

Presumably, this was a new strategy. After a tough New York meeting two days earlier, where many voices attacked both the report and the IRT team, in the London meeting you could see that they have learned their lesson. Their presentations finished with the concluding remarks that the report does not reflect ICANN and is not meant to be a solution (rather it seeks to open the discussion); they often repeated that the team was not given enough time to prepare its recommendations and submit its findings. We all realized that after New York the team was trying to tone things down a bit.

At the same time, however, the IRT team did not back off from its main argument that trademark interests should be of primary concern with the introduction of new gTLDs. Sentence after sentence they were arguing how much trademark owners suffer from bad registrants. I don't think they acknowledged at all that not all registrants are bad. I felt that the team used the most extreme of examples to convince the public that the IRT report is a good piece of policy that needs to be implemented.

And, to a certain extent, their plan did actually work. For example, if you are a parent and you hear that there are domain names promoting child pornography, of course you are going to applaud their work. But, no one really told these people that these constitute criminal activities and can be dealt in other forums; no one really said that trademark owners are not concerned about child pornography, but, in reality, they want to control words, phrases, terms and any linguistic activity that resembles their mark on the Internet; no one really mentioned that many trademark owners suppress free speech on the basis that the domain name is 'harming' their trademark.

Finally, after the long presentation by the IRT, the community was given opportunity to comment. I reiterated NCUC’s position that the IRT Recommendations are flawed and should not be implemented. There were also some excellent comments heard from Paul Keating (trademark lawyer) and Richard Tindal (from the well-known registrar, eNom) on the problems of the IRT report and its biased character.

One of the things that I realized is that we really need to inform the simple Internet user, the registrant, anywhere in the world, about what is happening and what the IRT team is trying to push forward. We need to make them see how they will be affected by this trademark invasion and how the DNS will be in jeopardy of losing its all-inclusive character and become a space reserved for trademark rights.

On route to the IRT meeting in London

2009-07-14T15:26:00.000-07:00

Nowadays, UK trains are really fast – 523 something kilometres in 4 hours. I am currently in one such train going from Glasgow to London. Tomorrow I will be attending the Implementation Recommendation Team (IRT) meeting, at the Royal Institute of Royal Architects at 9am. The plan was to sit and re-remind myself the key points of the report. But there was not enough time for a document that is so confusing and condensed with so many details.

The IRT report is a lengthy piece of 60-something pages and its main intention is to address trademark law issues due to the forthcoming expansion of the Root. It is quite fascinating reading the report and getting the vibes of what the IRT team seeks to do. The recommendation opens with a letter, signed by almost all IRT participants, which lacks inspiration and the ability to bring registrants and trademark owners together to fight cybersquatting and any other malicious activity on the Domain Name System (DNS).

The report repeats old mistakes and distances trademark owners and domain name registrants even further. Throughout the recommendation, the IRT team seeks to make registrants look as if they are the bad guys. It paints a picture in which trademark owners are the good, noble guys working towards the security and stability of the Internet and all rest of us are just bad; we want to harm trademark owners and their interests, we want to make profit from their marks – generally, that there is a conspiracy against them and we are not only part but the driving force behind it. This is not true. Of course, there are those registrations that aiming at harming a trademark; registrations that seek to extort or take advantage of the trademark owners. But, first, we need to bear in mind that this is not something new and, second, it is not that we have not sought to address its conceptual basis.

The IRT recommendation constitutes the result of the efforts of the IP community to provide legal protection mechanisms in light of the addition of new gTLDs. Presumably, the Intellectual Property constituency has been strongly opposing the expansion of the Root as they feared that trademark issues would be left unaddressed; the formation of the IRT team was the compromise ICANN found to ensure that trademark owners would get on board. But, is this really the case?

I think that the IP constituency is not opposed to this expansion as much as they might like us to think. Considering that the expansion of the Root gave the IP Constituency the opportunity not only to participate but also influence decision-making, I cannot help but wonder about the extent of opposition trademark owners have against the new gTLDs. It has been almost ten years since the IP constituency created and imposed the UDRP – a dispute resolution mechanism that would ultimately change the face of trademark litigation. Now they have the opportunity to change it once again.

Ten years ago, trademark owners won a significant fight and have imposed their will on the DNS through the Uniform Domain Name Dispute Resolution Policy. Back then, cybersquatting was emerging and it was a completely unknown territory; trademark owners simply did not know how to protect themselves. The UDRP was the experiment that was supposed to cure cybersquatting and all its subsequent manifestations. For the past ten years, four ICANN-accredited centres – through storm and hail – have been developing case law that is now used for various formal and informal statements and as a justification for further policy-making activities.

The IRT report does not take any of these ten years into account. It recognizes the work of the UDRP, but, at the same time, it contemplates that the UDRP is not enough. The reasons the UDRP is not enough and what are the new challenges presented for trademark law are not contemplated into the report. Remember all domain name registrants are bad and, thus, they need to be excluded form the DNS. Indiscriminately and without any legitimacy the report suggests three pillars of protection:

· IP Clearinghouse: seeks to transform and assign ICANN functions equivalent to national trademark offices. No criteria of entry are set and checks and balances are offered.

· Globally Marks Protected List: seeks to give exclusivity and utter control to trademark owners over the DNS. The criteria for entry are arbitrary and do not meet the ones set by courts and the legislature for well-know and/or famous marks.

· Uniform Rapid Suspension System (URS): seeks to provide trademark owners with an additional mechanism, creating an extra layer of administrative procedure and further distancing the parties from courts.

I am visiting London in order to debate on these issues. We have a serious problem and not enough time or people to speak about it. If we let this recommendation proceed unchanged, it will not only impact on trademark law itself but it will also inhibit the evolution of the DNS. It will provide trademark owners with the control to create an exclusive and commercial DNS; free speech rights and any other domain name use will be in jeopardy. We need to do something. I will certainly try to….

Let's boycott the IRT report

2009-07-09T14:08:00.001-07:00

So what is the case with trademark protection on the Internet? Is it some big conspiracy or are we really facing an overt expansion of trademark law? Let's see where we were and where we are now.

Ten years ago a big problem was presented by the massive use of the Internet. Along with P2P technology threatening copyrighted creations, domain names and their use by cybersquatters threatened trademarks. Cybersquatting occurred almost at the same time the Clinton Administration decided to privatize the Internet and create ICANN. The White Paper instructed ICANN to create the UDRP as a means to resolve these abusive domain name registrations that really harmed trademark rights. The UDRP was supposed to be the result of a legitimization process that equally took into account the rights of registrants, whilst acknowledging the unique nature of domain names.

In reality, the UDRP was a political game. Trademark owners gave a united front and exercised their political influence to create a system they would be able to control as much as possible. Non-commercial interests were squeezed in a subparagraph and were not given due attention. No one paused to think that, unless the system was scrutinized and properly administered, it would easily span out of control. That is where we are now. The UDRP is a biased system, controlled entirely by trademark owners.

And, it is not enough. It was never really enough for the trademark community. The IRT report is a perfect example. They want more-it is not enough. The report covers three major issues - the IP Clearinghouse, the Globally Protected Marks List, and the Uniform Rapid Suspension System - all of which seek to expand their rights and interests. It is really an issue of arrogance as trademark owners try to make all registrants look bad. Not all of them are bad and not all of them are cybersquatters. There are so many legitimate domain names that are so vital for the evolution of the Internet. They exist because registrants fight for them; we have to show them our solidarity and reject this report.

The full IRT report can be found at: http://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf

Find also the NCUC comments on the report at: http://icann-ncuc.ning.com/

Statement on the IRT recommendation on ICANN's new gTLDs

2009-06-21T04:46:00.000-07:00

[This is my statement on the IRT recommendation as disseminated and read at the ICANN Sydney meeting]

“STATEMENT ON THE IRT FINAL REPORT ON TRADEMARK PROTECTION

ISSUES”

June 16, 2009

Dear ICANN Board, Members and Participants,

The trademark community may seek to convince you that the Internet of 2009 is different from that of 1998; sure we talk about maximization in usage and a technologically more advanced network, however, social and legal issues remain essentially the same. The principles upon which ICANN was established and speak about representative and transparent procedures that promote competition and bottom‐up coordination also remain the same. Today, you are asked to respect these principles and to seriously contemplate upon and reject the recommendations of the Implementation Recommendation Team (IRT).

The genius decision of Jon Postel to replace numbers with names ensured the Internet’s popularity and transformed the DNS

alternatives: names, like “Amazon”, “Google” or “Facebook”, constitute examples of the language’s autonomy to progress and were the results of the efforts by unknown domain name entrepreneurs. Current vision for the expansion of the Root and the addition of new gTLDs suggests that this trend will continue.

Whereas early studies demonstrate that users believe that the introduction of new gTLDs can cause ‘trademark chaos (see the Guardian article available at http://www.guardian.co.uk/media/pda/2009/jun/09/internet‐digital‐media), it is now that we have a social responsibility to act in a balanced and fair manner and demonstrate to the Internet community that all these years we have been paying close attention to their concerns.

From its early years, aspects of the DNS have been overshadowed by the polemic concerning the balance of rights between trademark owners and domain name registrants. Imagine, for example, an Internet where ‘Google’ or ‘Amazon’ did not exist because they were infringing valid trademarks somewhere in the world and you will begin to understand where the heart of the problem lies.

Ten years ago, a compromise was struck through the UDRP. The idea was to create a mechanism that would complement the technical limitations of the DNS and provide answers to the ‘first‐come, first‐served’ restriction in domain name registrations. The problems the original UDRP drafting team was asked to address are the same as the problems of today: we need to create policies that aim at finding the correct balance between the rights of domain name registrants (present and future) and trademark owners (and the limits of their rights under existing law).

The expansion of the DNS truly depends on this balance; the addition of new gTLDs should not come with a corresponding need to dramatically increase the rights of trademark owners. The IRT recommendation seeks to transmogrify the DNS into an exclusive territory, where trademark interests will determine entry according to highly undemocratic criteria. This is not only contrary to trademark law, but it can also inhibit the incremental progress of the DNS.

The IRT report is problematic in two major ways: it fails to consider values of justice and does not take into account the normative limitations of trademark law. I would like to turn your attention to what the IRT recommends in respect of the confusing similarity analysis (“the confusing similarity analysis […] [should] include the aural and commercial impression […] in addition to the visual similarity”). Under this arbitrary rule, it would be possible for ‘Starbucks’ to block the word ‘Stareback’ as a commercial name or the word ‘Starsucks’ as a parody site. As the administrators of the DNS, you have the social responsibility to protect free speech and incentivize domain name registrants.

Contrary to what trademark owners might tell you, you need to realize that trademarks are not victimized through such registrations – the same way they are not victimized in the offline world. Trademark law operates in parallel with other legal instruments, which exist to complement it and fill its gaps where necessary. Defamation and anti‐competitive laws, for instance, can ensure that registrations of parody and commercial use respectively are not hindering the value of the trademark. Accepting the IRT recommendation means not only disregarding these aspects of law but also silencing the voices of individual registrants and impeding the evolution of the DNS.

Aristotle says that the “virtue of justice consists in moderation as regulated by wisdom”, meaning that policy initiatives should promote a self‐disciplined and an intellectually‐balanced framework. The IRT recommendation fails on both accounts. Whereas the IRT report should have sought to propose policy, which adheres to the limitations of trademark law, it instead suggests policy that conveniently expands the rights of trademark owners through the creation of the much‐controlled IP Clearinghouse and the formation of a list consisting of marks worthy of global protection. Given the fact that neither of these establishments constitutes part of trademark law’s culture, the IRT’s propositions envision a DNS controlled by trademark constituencies, seek to re‐define the conceptual basis of trademark law and promote a set of unbalanced and arbitrary criteria.

Similarly and despite what the IRT report states, the proposal attempts to indirectly prioritize trademark rights over domain name registrations through the creation of an additional adjudication mechanism, which lacks any conceptual

basis or procedural reasoning.

The problem of cybersquatting is essentially the same as it was back in the UDRP days; suggesting, therefore, the creation of a supplementary mechanism to deal with the same problem as the existing one has simply no justification. It only signals towards an additional protection mechanism for trademark interests. If the IRT were truly interested in fighting cybersquatting, they would propose a review and analysis of the UDRP and its case law. Ten years of UDRP practice provide evidence of how the system is procedurally flawed, biased, inconsistent, non‐uniform, and restricts the legal rights of registrants – so what else does the trademark community want?

I urge the members of the Board to STOP, THINK and REVISIT the IRT recommendations; to the wider ICANN community – registries, registrars and technologists – that has invested financial and intellectual resources in the Root expansion, I ask you to reconsider how the IRT proposal threatens your vision of technological evolution and innovation.

When filed in the comment process, NCUC will provide you with additional details how the IRT recommendation is neither fairly balanced nor does it promote justice. I understand the Root expansion; this need, however, should not be sacrificed to decisions that in the years to come can have a detrimental effect upon the use of the Internet. I appeal to you to consider carefully this policy initiative and its potential implications.

Thank you and good luck.

Yours Faithfully,

Dr. Konstantinos Komaitis

ICANN in Paris (part deux)

2008-07-01T06:36:00.000-07:00

Dear 'What Else is There' Bloggers,

in what can only be characterised as a turning point for trademarks law, the ICANN Board has announced that they have approved, despite serious objections and concnerns, the biggest-ever expansion of the gTLD space. Under this new scheme, ICANN potentially permits everyone to become a registry and run a gTLD.

Under the new draft proposal, which is anticipated to be materialised within the next six to nine months, applicants will have to successfully pass a number of tests and meet a set of criteria before they can be considered eligible to acquire a registry status. These criteria are substantive in nature and will focus on the following issues: string confusion; existing legal rights; morality and public order; and, finally, community objection. ICANN itself will not be the authority assigned to evaluate and examine the applications, but instead, according to Karla Valente, gTLD Program Director at ICANN, disputes will be handled by "an international organisation with experience in IP". After the consultation process, which most likely will take place within the next six months, it is anticipated that the first wave of applications will come in early to mid 2009. The fees involved for a company to become a registry can be as high as $100,000, an amount that, according to ICANN, can be justified in the effort to prevent cybersquatters and other individuals who might wish to abuse domain name registrations from becoming part of this new scheme.

There you have it dear bloggers. Just when you thought that we would not really have to deal again with ICANN, the corporation is in the eye of the storm. First of all, once again ICANN is getting involved in decision-making processes, irrespective of its mandate as a technical organisation. This is old news. However, this time the decision of the Board to allow individuals to register new gTLDs will have serious implications that no one can really forsee. The new scheme opposes the traditional, territorial nature of trademark law and will automatically create an international 'Treaty' regime, something that has consciously been avoided in the past. It will allow trademark owners and especially the ones who hold 'strong' trademarks to automatically acquire international protection over their marks without the necessity of following the long-standing rules of the Paris Convention.

At the same time, if Mrs. Valente's comment proves to be correct, the World Intellectual Property Organisation (WIPO) will most likely act as the dispute resolution provider that will evaluate the applications (it is afterall the main body with experience in IP). WIPO is an UN-body assigned the task to promote intellectual property issues - so once again domain name holders will found themselves trapped in the interests of trademark owners and their constituencies.

Finally, such a decision will also re-shape the face of trademark law. First of all, generic terms will be allowed to be registered as gTLD - something that is forbidden by trademark regimes. ICANN is no longer promoting the 'first-come, first served' rule, which apart from its disadvantages, at least it was offering a certain amount of procedural justice. The new proposal seems to be promoting an elitistic model - whoever can afford $100,000 will end up having a gTLD.

The scheme has a lot of gaps as it does not answer the crucial question of what will happen in case two applications conerning identical or confusingly similar gTLD extensions come before these panels. Which criteria will then be used for choosing who should become the registry?

These issues open Pandora's Box and create a series of affairs that will certainly have implications upon all users, small and medium sized enterprises as well as entrepreneurs and start-up business ventures. The addressing system is encouraging the creation of an "exclusive club" that seems to be securing and protecting only certain interests.

ICANN does Paris (part une)

2008-06-25T08:51:00.000-07:00

Dear "What else is there" bloggers...

This week in Paris is all about ICANN and the discussion have been as controversial as always. ICANN talks legitimacy and transparency, its actions say different and participants try to salvage the remainings of ICANN's recommendations. One issue that has generated a fair amount of controversy has been the recent Westlake Report concerning the role and structure of the At-Large Advisory Committee (ALAC).

Historically, the role of ALAC has been in place to serve two purposes:

(i) to provide an opportunity to individual Internet users for participation in ICANN's activities; and,

(ii) to be a vehicle for ICANN's accountability to the Internet community in accordance with its core values and its bottom-up, consensus-based way of operating.

The aim of the report focused on whether ALAC should exist in ICANN and, if so, whether there are any changes that are required within its structure. The Westlake Report concluded the following:

1. ALAC should continue to contribute actively to ICANN's policy development processes;

2. ICANN's outreach activities must be made consistently relevant to the needs of individual Internet users throughout the world; and

3. ALAC must ensure that it is seen within ICANN as being a valuable component of the total structure.

The report is highly flawed and it does not reflect the organizational problems that are inherent in ICANN. It starts from the wrong premise that ICANN is involved or should be for that matter in policy making and from this perception it seeks to identify the role of ALAC within its structure. Moreover, the report still denies any voting ability for ALAC in ICANN's board, something that lies at the core of individual users' misrepresentation in ICANN. Another issues with reading the report is that the language used seems to be placing the burden of effort to ALAC to ensure that they maintain a significant role within ICANN. The report recognizes that the steps that ICANN has taken thus far are sufficient and that there is a noticeable progress of support that ICANN has provided ALAC. This is not really the case as ICANN has not really substantially changed any of its charters to acknowledge more rights to constituencies such ALAC that merely represent everyday users.

At the same time, Westlake consultants were not able to convince the participants on the Monday session about the conclusions of their report. On the question whether they have considered the prospect of end users having voting powers within the ICANN board, the response was "Now, our review was a review of the At-Large Advisory Committee. Individual Internet users, the question of whether they should vote members of the board, we believe, in fact, bypassed our review, was beyond the scope of our review of the At-Large Advisory Committee". This answer implies that this issue was not even considered and, once again, it proves that even independent reports seem to be not so independent after all and are merely serving ICANN's needs.

Finally, although the report identifies that RALOs do not really correspond to the global population of Internet users and that the Asia-Pacific region is misrepresented, still it failed to mention the implication for African countries and the lack of support that RALOs currently receive from ICANN.

That is what has been happening in only one of the sessions of the ICANN meeting. The future now of the Westlake report rests on ICANN's board, which I do not see changing its position to offer more rights to individual users or ALAC for that matter. The conclusions are yours.

To be continued.....

GigaNet Workshop - Paris, June 2008

2008-03-11T03:19:00.000-07:00

Another great initiative in the form of a workshop has been generated by the Global Internet Governance Academic Network (GigaNet). The workshop will be held in Paris, prior to the ICANN meeting, on the morning of 23 June 2008. The aim of the workshop is to bring together academics and scholars to discuss issues pertaining to the field of Internet Governance. Its thematic agenda focuses on: "Global Internet Governance: An Interdisciplinary Research Field in Construction". The call for paper is now open and the deadline is set for 15 April 2008. More information about the workshop can be found at: http://www.igloo.org/community.igloo?r0=community&r0_script=/scripts/announcement/view.script&r0_pathinfo=%2F%7B58dacb33-31ea-4219-9124-89a75ffe71d0%7D%2FAnnouncements%2Fgenerala%2Fgiganetaca&r0_output=xml

ICANN: Declaration of Independence

2008-01-28T09:06:00.000-08:00

BBC News reports that ICANN has made a plea to the US Department of Commerce to become fully independent. (http://news.bbc.co.uk/1/hi/technology/7205609.stm). These news come after many years of controversy surrounding the corporation and its affiliation and influence by the US Government.
In 2006, ICANN entered a Joint Project Agreement (JPA) with the US Government agreeing to collaborate in the "developement of the mechanisms, methods, and procedures necessary to effect the transition of Internet domain name and addressing system (DNS) to the private sector". (http://www.ntia.doc.gov/ntiahome/domainname/agreements/jpa/icannjpa_09292006.htm) This Agreement is due to terminate at the end of September 2009.
According to the President of ICANN, Paul Twomey the agreed objectives between ICANN and the US DoC were "essentially complete". And he added: "Has the process of the MoU and JPA towards building a stable, strong organisation which can do this transition, has that been successful? The board is effectively saying yes".
But, what does this mean? In reality ICANN's independence is something that many have been wishing for. However, will it work? Now, this is a whole different story.
With the Internet Governance debate ongoing, ICANN still tries to place itself and define the scope of its authority on the Internet Governance arena. What this independece implies and, better yet, who will actually be responsible for monitoring ICANN's actions?
According to Mr. Twomey governments would still be able to inform the corporation about developments concerning public policy issues, but they would not be able to influence or dictate ICANN's developement.
If that is the case, this approach will raise a number of new questions. ICANN is already under attack over its 'masonic' structure, secretive meetings, non-inclusive role and generally the way it has been hanlding issues pertaining to the addressing system, like for instance its Uniform Domain Name Dispute Resolution Policy, the addition of new gTLDs in the addressing system and WHOIS concerns. With no one to keep ICANN under scrutiny and with issues of Internet Governance and the role of the private sector still being far from resolved, the corporation can acquire more power and control than it currently holds.
Even though it is still very early to make assumptions, one can not help but wonder whether we will find ourselves thinking that the old status of ICANN would actually be better than the proposed new one.

Because some things never change...

2008-01-15T08:43:00.001-08:00

It has been a very long time since we have heard any news on ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). It has actually been even longer, since the first study on domain name disputes - Fair.com? (http://aix1.uottawa.ca/~geist/geistudrp.pdf) - by Michael Geist was publised and showed a rather concerning pattern of trademark owners winning in most of the cases. The results of Geist's study were quite revealing: the success rate for complainants of all the cases brought before WIPO panels was, at the time, 82.2%. This relevation brought to light the inadequecies of the system and raised concerns over various issues such as forum shopping.
However, almost seven years after the study, a new report comes to light and shows ICANN's incapacity, inability or indiference to address issues that have constituted procedural flaws within the UDRP ever since its inception.
In a very recent article, the Wall Street Journal has reported that in 2007 domain name disputes have reached an all-time high (http://blogs.wsj.com/law/2008/01/11/domain-name-disputes-at-an-all-time-high/). According to data from the World Intellectual Property Organisation (WIPO), in 2007 domain name disputes have reached a 2,156 fraction, making it its most successful year yet. Of all these cases, 85% of trademark owners have prevailed.
Even though we can not safely argue that this high percentage is unsubstantiated, still this number is rather alarming.
With the number of dispute resolution providers dropping (since the creation of the UDRP ICANN has lost two of its service providers and has only added one), WIPO is still receiving the majority of the disputes and for obvious reasons. So what is the conclusion? Just because the criticism against the UDRP has gone quite, it doesn't mean that the system is functioning properly. The UDRP obviously still suffers from procedural and substantive issues; and, since businesses and entrepreneurs are depending on domain names to build their businesses online, it is about time we start addressing and answering some very crucial questions - what is - in reality - the legal nature of domain names?

China,Pop Idol and Internet Governance

2008-01-09T08:58:00.000-08:00

In the beginning of December 2007, I had the opportunity to find myself in Beijing, China for a conference, whereby I presented a paper on the feasibility of a Consitution for the Internet.
The paper was well received, some interesting comments were made, but the target audience I was particularly aiming for to criticise my presentation was absent. Talking about a Constitution for the Internet in a country where the Internet is restricted only to 'permitted' sites is a bit ironic - thus, I was anticipating a bigger debate than the one I received. In my audience there were hardly any Chinese students, colleagues or anybody that would have been interested in the topics discussed there.
Is it that the Chinese are not interested or is that the issues discussed could have raised eyebrows within the Chinese culture? In light of this, I can safely say that this experience only made my belief that some sort of a Constitution, 'a framework of fundamental rights', 'an Internet Bill of Rights' - call it whatever you want - might be the only solution to the challenges that we currently face.
The Chinese seem eager to participate in anything that interest them and that can be seen from the latest Chinese experiment. I was discussing with a student from the univeristy of Beijing, who told me that 'Pop Idol' entered the Chinese market. Its popularity is massive and its ratings have hit skyhigh - and this is because of a very simple reason; for the first time in Chinese history people are given the opportunity to vote, to have a democratic process in place and determine an outcome based on basic and fundamental democratic processes.
For this reason, it is vital to have a set of fundamental rights and rules that will be applicable for all of us that use the Internet, Chinese, Europeans, Americans, Indians and all the other people of this world that see the Internet as a means of massive potential and communication. I suggest let's give users a voice and a chance to actually actively participate in the debate. Let's try to remove politics from the Internet and bring it back to its roots - a means of communication and an educational tool.