New UDRP study shows signs of unreliable procedures.

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

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

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

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?

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

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.

1. 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.

2. 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).

3. 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.

4. 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.

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.