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

Paper shared on August 7, 2009

What the IRT Proposes:

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

l monetize off the value and goodwill of a brand,

l distribute counterfeit goods,

l malware and other malicious software,

l phishing attempts, and

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

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

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

Dangers/Problems with the URS Proposal:

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

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

as proposed. For instance, the URS mechanism subverts conventional

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

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

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

principle of due process.”

In brief, the URS , if implemented, will:

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

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

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

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

“Rapid Solution?

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

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

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

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

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

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

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

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

- send certain registrant groups to Congress, and

- destroy the GNSO process.

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

What We Recommend:

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

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

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

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

a. Defend

b. Surrender the name.

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

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

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

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

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

(A Possible Middle Ground)

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

- are not engaged in fair use;

- are not engaged in a commentary situation; and

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

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

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

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

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

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

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

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

A Further Step: Rapid Takedown of Criminal Conduct

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

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

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

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

Recommended Next Steps:

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

- review the two options; and

- determine which option to move forward on.

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

Kathryne Kleiman, Esq.

Trademark Law Attorney, UDRP Drafter

Dr. Konstantinos Komaitis

Law Professor

University of Strathclyde,

Glasgow, UK

Meeting with ICANN Staff, August 7, 2009

Dear bloggers,

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

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

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

IRT Recommendation and ICANN's Inconsistencies

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

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

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

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

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

STatement on the ICANN NCUC's Charter Proposal

Wednesday, July 22, 2009

Individual Statement on ICANN NCUC’s Charter Proposal

Dear ICANN,

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

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

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

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

Thank you.

Sincerely Yours,

Dr. Konstantinos Komaitis,

University of Strathclyde (Law School),

Member of NCUC.

Internet Users Are Being Threatened: The IRT Meeting in London

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

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

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

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

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

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

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

On route to the IRT meeting in London

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

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

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

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

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

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

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

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

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

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

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

Let's boycott the IRT report

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

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

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

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

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

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