ICANN is sending trademark issues back to the GNSO

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.

Statement on the IRT recommendation on ICANN's new gTLDs

[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