Statement on the IRT recommendation on ICANN's new gTLDs

[This is my statement on the IRT recommendation as disseminated and read at the ICANN Sydney meeting]

“STATEMENT ON THE IRT FINAL REPORT ON TRADEMARK PROTECTION

ISSUES”

June 16, 2009

Dear ICANN Board, Members and Participants,

The trademark community may seek to convince you that the Internet of 2009 is different from that of 1998; sure we talk about maximization in usage and a technologically more advanced network, however, social and legal issues remain essentially the same. The principles upon which ICANN was established and speak about representative and transparent procedures that promote competition and bottom‐up coordination also remain the same. Today, you are asked to respect these principles and to seriously contemplate upon and reject the recommendations of the Implementation Recommendation Team (IRT).

The genius decision of Jon Postel to replace numbers with names ensured the Internet’s popularity and transformed the DNS 

alternatives: names, like “Amazon”, “Google” or “Facebook”, constitute examples of the language’s autonomy to progress and were the results of the efforts by unknown domain name entrepreneurs. Current vision for the expansion of the Root and the addition of new gTLDs suggests that this trend will continue.

Whereas early studies demonstrate that users believe that the introduction of new gTLDs can cause ‘trademark chaos (see the Guardian article available at http://www.guardian.co.uk/media/pda/2009/jun/09/internet‐digital‐media), it is now that we have a social responsibility to act in a balanced and fair manner and demonstrate to the Internet community that all these years we have been paying close attention to their concerns.

From its early years, aspects of the DNS have been overshadowed by the polemic concerning the balance of rights between trademark owners and domain name registrants. Imagine, for example, an Internet where ‘Google’ or ‘Amazon’ did not exist because they were infringing valid trademarks somewhere in the world and you will begin to understand where the heart of the problem lies.

Ten years ago, a compromise was struck through the UDRP. The idea was to create a mechanism that would complement the technical limitations of the DNS and provide answers to the ‘first‐come, first‐served’ restriction in domain name registrations. The problems the original UDRP drafting team was asked to address are the same as the problems of today: we need to create policies that aim at finding the correct balance between the rights of domain name registrants (present and future) and trademark owners (and the limits of their rights under existing law).

The expansion of the DNS truly depends on this balance; the addition of new gTLDs should not come with a corresponding need to dramatically increase the rights of trademark owners. The IRT recommendation seeks to transmogrify the DNS into an exclusive territory, where trademark interests will determine entry according to highly undemocratic criteria. This is not only contrary to trademark law, but it can also inhibit the incremental progress of the DNS.

The IRT report is problematic in two major ways: it fails to consider values of justice and does not take into account the normative limitations of trademark law. I would like to turn your attention to what the IRT recommends in respect of the confusing similarity analysis (“the confusing similarity analysis […] [should] include the aural and commercial impression […] in addition to the visual similarity”). Under this arbitrary rule, it would be possible for ‘Starbucks’ to block the word ‘Stareback’ as a commercial name or the word ‘Starsucks’ as a parody site. As the administrators of the DNS, you have the social responsibility to protect free speech and incentivize domain name registrants.

Contrary to what trademark owners might tell you, you need to realize that trademarks are not victimized through such registrations – the same way they are not victimized in the offline world. Trademark law operates in parallel with other legal instruments, which exist to complement it and fill its gaps where necessary. Defamation and anti‐competitive laws, for instance, can ensure that registrations of parody and commercial use respectively are not hindering the value of the trademark. Accepting the IRT recommendation means not only disregarding these aspects of law but also silencing the voices of individual registrants and impeding the evolution of the DNS.

Aristotle says that the “virtue of justice consists in moderation as regulated by wisdom”, meaning that policy initiatives should promote a self‐disciplined and an intellectually‐balanced framework. The IRT recommendation fails on both accounts. Whereas the IRT report should have sought to propose policy, which adheres to the limitations of trademark law, it instead suggests policy that conveniently expands the rights of trademark owners through the creation of the much‐controlled IP Clearinghouse and the formation of a list consisting of marks worthy of global protection. Given the fact that neither of these establishments constitutes part of trademark law’s culture, the IRT’s propositions envision a DNS controlled by trademark constituencies, seek to re‐define the conceptual basis of trademark law and promote a set of unbalanced and arbitrary criteria.

Similarly and despite what the IRT report states, the proposal attempts to indirectly prioritize trademark rights over domain name registrations through the creation of an additional adjudication mechanism, which lacks any conceptual

basis or procedural reasoning.

The problem of cybersquatting is essentially the same as it was back in the UDRP days; suggesting, therefore, the creation of a supplementary mechanism to deal with the same problem as the existing one has simply no justification. It only signals towards an additional protection mechanism for trademark interests. If the IRT were truly interested in fighting cybersquatting, they would propose a review and analysis of the UDRP and its case law. Ten years of UDRP practice provide evidence of how the system is procedurally flawed, biased, inconsistent, non‐uniform, and restricts the legal rights of registrants – so what else does the trademark community want?

I urge the members of the Board to STOP, THINK and REVISIT the IRT recommendations; to the wider ICANN community – registries, registrars and technologists – that has invested financial and intellectual resources in the Root expansion, I ask you to reconsider how the IRT proposal threatens your vision of technological evolution and innovation.

When filed in the comment process, NCUC will provide you with additional details how the IRT recommendation is neither fairly balanced nor does it promote justice. I understand the Root expansion; this need, however, should not be sacrificed to decisions that in the years to come can have a detrimental effect upon the use of the Internet. I appeal to you to consider carefully this policy initiative and its potential implications.

Thank you and good luck.

Yours Faithfully,

Dr. Konstantinos Komaitis

ICANN in Paris (part deux)

Dear 'What Else is There' Bloggers,

in what can only be characterised as a turning point for trademarks law, the ICANN Board has announced that they have approved, despite serious objections and concnerns, the biggest-ever expansion of the gTLD space. Under this new scheme, ICANN potentially permits everyone to become a registry and run a gTLD.

Under the new draft proposal, which is anticipated to be materialised within the next six to nine months, applicants will have to successfully pass a number of tests and meet a set of criteria before they can be considered eligible to acquire a registry status. These criteria are substantive in nature and will focus on the following issues: string confusion; existing legal rights; morality and public order; and, finally, community objection. ICANN itself will not be the authority assigned to evaluate and examine the applications, but instead, according to Karla Valente, gTLD Program Director at ICANN, disputes will be handled by "an international organisation with experience in IP". After the consultation process, which most likely will take place within the next six months, it is anticipated that the first wave of applications will come in early to mid 2009. The fees involved for a company to become a registry can be as high as $100,000, an amount that, according to ICANN, can be justified in the effort to prevent cybersquatters and other individuals who might wish to abuse domain name registrations from becoming part of this new scheme.

There you have it dear bloggers. Just when you thought that we would not really have to deal again with ICANN, the corporation is in the eye of the storm. First of all, once again ICANN is getting involved in decision-making processes, irrespective of its mandate as a technical organisation. This is old news. However, this time the decision of the Board to allow individuals to register new gTLDs will have serious implications that no one can really forsee. The new scheme opposes the traditional, territorial nature of trademark law and will automatically create an international 'Treaty' regime, something that has consciously been avoided in the past. It will allow trademark owners and especially the ones who hold 'strong' trademarks to automatically acquire international protection over their marks without the necessity of following the long-standing rules of the Paris Convention.

At the same time, if Mrs. Valente's comment proves to be correct, the World Intellectual Property Organisation (WIPO) will most likely act as the dispute resolution provider that will evaluate the applications (it is afterall the main body with experience in IP). WIPO is an UN-body assigned the task to promote intellectual property issues - so once again domain name holders will found themselves trapped in the interests of trademark owners and their constituencies.

Finally, such a decision will also re-shape the face of trademark law. First of all, generic terms will be allowed to be registered as gTLD - something that is forbidden by trademark regimes. ICANN is no longer promoting the 'first-come, first served' rule, which apart from its disadvantages, at least it was offering a certain amount of procedural justice. The new proposal seems to be promoting an elitistic model - whoever can afford $100,000 will end up having a gTLD.

The scheme has a lot of gaps as it does not answer the crucial question of what will happen in case two applications conerning identical or confusingly similar gTLD extensions come before these panels. Which criteria will then be used for choosing who should become the registry?

These issues open Pandora's Box and create a series of affairs that will certainly have implications upon all users, small and medium sized enterprises as well as entrepreneurs and start-up business ventures. The addressing system is encouraging the creation of an "exclusive club" that seems to be securing and protecting only certain interests.

ICANN does Paris (part une)

Dear "What else is there" bloggers...

This week in Paris is all about ICANN and the discussion have been as controversial as always. ICANN talks legitimacy and transparency, its actions say different and participants try to salvage the remainings of ICANN's recommendations. One issue that has generated a fair amount of controversy has been the recent Westlake Report concerning the role and structure of the At-Large Advisory Committee (ALAC).

Historically, the role of ALAC has been in place to serve two purposes:

(i) to provide an opportunity to individual Internet users for participation in ICANN's activities; and,

(ii) to be a vehicle for ICANN's accountability to the Internet community in accordance with its core values and its bottom-up, consensus-based way of operating.

The aim of the report focused on whether ALAC should exist in ICANN and, if so, whether there are any changes that are required within its structure. The Westlake Report concluded the following:

1. ALAC should continue to contribute actively to ICANN's policy development processes;

2. ICANN's outreach activities must be made consistently relevant to the needs of individual Internet users throughout the world; and

3. ALAC must ensure that it is seen within ICANN as being a valuable component of the total structure.

The report is highly flawed and it does not reflect the organizational problems that are inherent in ICANN. It starts from the wrong premise that ICANN is involved or should be for that matter in policy making and from this perception it seeks to identify the role of ALAC within its structure. Moreover, the report still denies any voting ability for ALAC in ICANN's board, something that lies at the core of individual users' misrepresentation in ICANN. Another issues with reading the report is that the language used seems to be placing the burden of effort to ALAC to ensure that they maintain a significant role within ICANN. The report recognizes that the steps that ICANN has taken thus far are sufficient and that there is a noticeable progress of support that ICANN has provided ALAC. This is not really the case as ICANN has not really substantially changed any of its charters to acknowledge more rights to constituencies such ALAC that merely represent everyday users.

At the same time, Westlake consultants were not able to convince the participants on the Monday session about the conclusions of their report. On the question whether they have considered the prospect of end users having voting powers within the ICANN board, the response was "Now, our review was a review of the At-Large Advisory Committee. Individual Internet users, the question of whether they should vote members of the board, we believe, in fact, bypassed our review, was beyond the scope of our review of the At-Large Advisory Committee". This answer implies that this issue was not even considered and, once again, it proves that even independent reports seem to be not so independent after all and are merely serving ICANN's needs.

Finally, although the report identifies that RALOs do not really correspond to the global population of Internet users and that the Asia-Pacific region is misrepresented, still it failed to mention the implication for African countries and the lack of support that RALOs currently receive from ICANN. 

That is what has been happening in only one of the sessions of the ICANN meeting. The future now of the Westlake report rests on ICANN's board, which I do not see changing its position to offer more rights to individual users or ALAC for that matter. The conclusions are yours.

To be continued.....

GigaNet Workshop - Paris, June 2008

Another great initiative in the form of a workshop has been generated by the Global Internet Governance Academic Network (GigaNet). The workshop will be held in Paris, prior to the ICANN meeting, on the morning of 23 June 2008. The aim of the workshop is to bring together academics and scholars to discuss issues pertaining to the field of Internet Governance. Its thematic agenda focuses on: "Global Internet Governance: An Interdisciplinary Research Field in Construction". The call for paper is now open and the deadline is set for 15 April 2008. More information about the workshop can be found at: http://www.igloo.org/community.igloo?r0=community&r0_script=/scripts/announcement/view.script&r0_pathinfo=%2F%7B58dacb33-31ea-4219-9124-89a75ffe71d0%7D%2FAnnouncements%2Fgenerala%2Fgiganetaca&r0_output=xml

ICANN: Declaration of Independence

BBC News reports that ICANN has made a plea to the US Department of Commerce to become fully independent. (http://news.bbc.co.uk/1/hi/technology/7205609.stm). These news come after many years of controversy surrounding the corporation and its affiliation and influence by the US Government.
In 2006, ICANN entered a Joint Project Agreement (JPA) with the US Government agreeing to collaborate in the "developement of the mechanisms, methods, and procedures necessary to effect the transition of Internet domain name and addressing system (DNS) to the private sector". (http://www.ntia.doc.gov/ntiahome/domainname/agreements/jpa/icannjpa_09292006.htm) This Agreement is due to terminate at the end of September 2009.
According to the President of ICANN, Paul Twomey the agreed objectives between ICANN and the US DoC were "essentially complete". And he added: "Has the process of the MoU and JPA towards building a stable, strong organisation which can do this transition, has that been successful? The board is effectively saying yes".
But, what does this mean? In reality ICANN's independence is something that many have been wishing for. However, will it work? Now, this is a whole different story.
With the Internet Governance debate ongoing, ICANN still tries to place itself and define the scope of its authority on the Internet Governance arena. What this independece implies and, better yet, who will actually be responsible for monitoring ICANN's actions?
According to Mr. Twomey governments would still be able to inform the corporation about developments concerning public policy issues, but they would not be able to influence or dictate ICANN's developement.
If that is the case, this approach will raise a number of new questions. ICANN is already under attack over its 'masonic' structure, secretive meetings, non-inclusive role and generally the way it has been hanlding issues pertaining to the addressing system, like for instance its Uniform Domain Name Dispute Resolution Policy, the addition of new gTLDs in the addressing system and WHOIS concerns. With no one to keep ICANN under scrutiny and with issues of Internet Governance and the role of the private sector still being far from resolved, the corporation can acquire more power and control than it currently holds.
Even though it is still very early to make assumptions, one can not help but wonder whether we will find ourselves thinking that the old status of ICANN would actually be better than the proposed new one.

Because some things never change...

It has been a very long time since we have heard any news on ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP). It has actually been even longer, since the first study on domain name disputes - Fair.com? (http://aix1.uottawa.ca/~geist/geistudrp.pdf) - by Michael Geist was publised and showed a rather concerning pattern of trademark owners winning in most of the cases. The results of Geist's study were quite revealing: the success rate for complainants of all the cases brought before WIPO panels was, at the time, 82.2%. This relevation brought to light the inadequecies of the system and raised concerns over various issues such as forum shopping.
However, almost seven years after the study, a new report comes to light and shows ICANN's incapacity, inability or indiference to address issues that have constituted procedural flaws within the UDRP ever since its inception.
In a very recent article, the Wall Street Journal has reported that in 2007 domain name disputes have reached an all-time high (http://blogs.wsj.com/law/2008/01/11/domain-name-disputes-at-an-all-time-high/). According to data from the World Intellectual Property Organisation (WIPO), in 2007 domain name disputes have reached a 2,156 fraction, making it its most successful year yet. Of all these cases, 85% of trademark owners have prevailed.
Even though we can not safely argue that this high percentage is unsubstantiated, still this number is rather alarming.
With the number of dispute resolution providers dropping (since the creation of the UDRP ICANN has lost two of its service providers and has only added one), WIPO is still receiving the majority of the disputes and for obvious reasons. So what is the conclusion? Just because the criticism against the UDRP has gone quite, it doesn't mean that the system is functioning properly. The UDRP obviously still suffers from procedural and substantive issues; and, since businesses and entrepreneurs are depending on domain names to build their businesses online, it is about time we start addressing and answering some very crucial questions - what is - in reality - the legal nature of domain names?

China,Pop Idol and Internet Governance

In the beginning of December 2007, I had the opportunity to find myself in Beijing, China for a conference, whereby I presented a paper on the feasibility of a Consitution for the Internet.
The paper was well received, some interesting comments were made, but the target audience I was particularly aiming for to criticise my presentation was absent. Talking about a Constitution for the Internet in a country where the Internet is restricted only to 'permitted' sites is a bit ironic - thus, I was anticipating a bigger debate than the one I received. In my audience there were hardly any Chinese students, colleagues or anybody that would have been interested in the topics discussed there.
Is it that the Chinese are not interested or is that the issues discussed could have raised eyebrows within the Chinese culture? In light of this, I can safely say that this experience only made my belief that some sort of a Constitution, 'a framework of fundamental rights', 'an Internet Bill of Rights' - call it whatever you want - might be the only solution to the challenges that we currently face.
The Chinese seem eager to participate in anything that interest them and that can be seen from the latest Chinese experiment. I was discussing with a student from the univeristy of Beijing, who told me that 'Pop Idol' entered the Chinese market. Its popularity is massive and its ratings have hit skyhigh - and this is because of a very simple reason; for the first time in Chinese history people are given the opportunity to vote, to have a democratic process in place and determine an outcome based on basic and fundamental democratic processes.
For this reason, it is vital to have a set of fundamental rights and rules that will be applicable for all of us that use the Internet, Chinese, Europeans, Americans, Indians and all the other people of this world that see the Internet as a means of massive potential and communication. I suggest let's give users a voice and a chance to actually actively participate in the debate. Let's try to remove politics from the Internet and bring it back to its roots - a means of communication and an educational tool.