IRT Recommendation and ICANN's Inconsistencies

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

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

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

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

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

[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)

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.