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.

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.

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.

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.

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