Sticking rigorously to it’s the timetable (http://icann.org/en/minutes/draft-timeline-new-gtlds-18mar11-en.pdf ) for pre-launch wrap-up of the new gTLD program, ICANN has issued the latest and near-final version of the Applicant Guidebook (http://icann.org/en/announcements/announcement-2-15apr11-en.htm ).
However, while ICANN is sprinting toward a mid-June Singapore meeting finish line, its Governmental Advisory Committee (GAC) seems to be in no similar haste. The timetable called for the GAC to provide further feedback by March 25th, but the GAC missed that date by several weeks, publicly issuing its 22-page Comments on the Board’s response to the GAC Scorecard on April 13th (http://gac.icann.org/system/files/20110412_GAC_comments_on_the_Board_response_to_the_GAC_scorecard_0.pdf ). That document indicates that the parties are still far apart on such matters as controversial strings, economic study data, and geographic names – and that the GAC expects further extended dialogue before new gTLDs are launched.
And those GAC comments did not even address trademark and other rights protection issues, which have been the most contentious in their ongoing dialogue and where ICANN’s Board has taken the firmest stance against suggested GAC changes. The GAC was reportedly readying a second document addressing those issues, but as of Friday, April 15th it had not yet been posted at its website (http://gac.icann.org/ ). In any event, ICANN didn’t wait on them, which means that any additional dialogue will mainly occur during the Board-GAC teleconference that is supposed to occur on May 20th.
Our initial review of the latest Guidebook finds that the main changes to the TM protection portion are in the Trademark Claims and Sunrise Services portion. While these are of interest to those contemplating an application for a new gTLD or providing advisory services to applicants, they are of secondary import to registrants of generic domains that fall outside the parameters of names protected during a registry’s launch process.
In the Uniform Rapid Suspension (URS) section, which has been ICA’s main focus, there were three substantive changes of significance:
• A limited “loser pays’ model has been adopted – but it is not the “loser pays” model the GAC was pushing for. That would have placed the entire financial burden on a losing registrant for all fees related to the URS as well as the complainant’s legal fees. This model would require registrants who face a complaint listing 26 or more disputed domain names simultaneously to deposit a “Response Fee”, the amount of which is unspecified other than that it cannot exceed the filing fee charged to the complainant. This Response Fee goes to the prevailing party, so in essence this is an administrative fee charged to a registrant who has just over two dozen names in contention simultaneously via a single complaint. Fees are projected to be about $300 per proceeding, according the latest Guidebook language, and if that is how things work out in practice it would not create a large incentive for complainants to file such broad complaints targeting a single registrant; such complaints have been rare in UDRP practice, and we’d expect them to be similarly unique under the URS. (On the other hand, the notion that a domain targeted in such an multi-domain action can be suspended for an $11.53 pro rata fee is extremely disquieting and raises questions about the expected quality of URS examiner decisions.)
• The appeals period for a losing registrant has been cut from two years to six months. Hopefully, any registrant who believes he has been wronged in a URS proceeding would likely appeal within six months, which is probably enough time to prepare that action.
• There is clarification regarding the qualifying criteria for a trademark that can seek URS protection, but nothing jumps out on first impression as being worrisome for registrants.
Importantly, the Board rejected the GAC’s overreaching suggestions for changing the bad faith registration/use requirement to be proved in a URS action from conjunctive (and) to disjunctive (or); and has kept the required evidentiary standard at clear and convincing evidence, higher than what is required (preponderance of the evidence) for a UDRP. Caving on either of these fundamental issues would have been very problematic for any registrant contemplating the purchase of domains in new gTLDs.
Nonetheless, the further URS concessions made in this Guidebook version build on a previous Board concession made last September, which cut the registrant’s response time to a URS filing from 20 to 14 days (while allowing for some extension upon request). The Board also conceded last month in Brussels that a complainant should receive first option to acquire a suspended domain, a transfer feature that brings the URS perilously close to being a functional substitute for the UDRP (however, the new Guidebook contains no language effectuating that concession, which leaves us unclear as to where it stands). Yet the GAC has made no similar concessions – in fact, its demands on trademark issues have only escalated this year at the urging of IP attorneys for large corporate interests.
ICA will review the GAC’s response on trademark issues as soon as it is made public, and will continue to work with like-minded parties to oppose any further Board concessions on the URS. ICANN Board and staff have repeatedly stated that they will not alter the fundamental balance on rights protection worked out last year through a broad community consensus process. Any further concessions, especially in regard to the URS, will violate that pledge, injure the economic prospects for new gTLDs, and negatively prejudice the UDRP reform process that ICANN recently embarked upon.
As for whether ICANN will adhere to the Singapore launch date even if the GAC remains deeply concerned about multiple issues, and accept the political risks inherent in that decision, only time will tell.