It was only four months ago that the SOPA legislation (and its U.S. Senate companion, PIPA) crashed and burned in rather spectacular, unanticipated, and embarrassing fashion following a White House policy statement that distanced the Obama Administration from those proposals to give copyright and trademark owners new means to shutter domains claimed to be infringing, as well as after an unprecedented Internet “blackout” protesting domain censorship. While PIPA and SOPA supposedly targeted “rogue foreign websites” even a cursory examination revealed that they gave IP interests expedited means to choke off domestic websites. A large part of the reason those bills failed was a process that refused to engage with opposing interests in any meaningful way, that opted for opaqueness rather than transparency, and that would have resulted in new law that unduly tipped toward IP interests and against website operators.
Gauging from recent IP sector statements urging ICANN to impose the new, untested, and apparently still unsettled Uniform Rapid Suspension (URS) rights protection mechanism (RPM) on more than 100 million .Com domains through amendment of the renewal contract that ICANN is now negotiating with VeriSign, they seem to have learned little from the SOPA experience. Once again, we are witnessing the use of “bait and switch” tactics that seek to downplay what’s clearly a major policy question into just one more contractual detail, and a refusal to acknowledge that there are very significant domain registrant rights issues that need to be addressed in a balanced and informed fashion alongside trademark rights.
ICA just filed our reply comment on the .Com renewal (for our original submission see http://internetcommerce.org/SOPA_Size_DotCom) and in it we take on the contention of ICANN’s IP Constituency (IPC) that the .Com registry is somehow getting a “free pass” by not writing in a requirement that URS be imposed sometime during the contract term. As our letter points out, the GNSO Council is on record as setting a mid-2014 initiation date for UDRP reform, which should result in a report and recommendations by sometime in 2016. Well, the new .Com contract will run from December 2012 through December 2018 – which means that if a UDRP reform process recommends that URS be required at .Com and other incumbent gTLD registries, and it subsequently receives community consensus and ICANN Board approval, it can take effect during the next contract term.
The big difference between our position and the IPC’s is that they would impose URS on .Com registrants without any real world experience. ICA, on the other hand, believes it would be prudent to make sure it’s not an operational and registrants’ rights fiasco before making a final decision; and that the question should be decided in the context of considering overall improvements to the UDRP, which is and will remain the main dispute resolution process at both new and incumbent gTLDs.
Such informed consideration has become particularly important since ICANN staff – after consultation with the IPC and WIPO, but no other identified parties – has apparently decided that URS should be “reconfigured” through a yet undefined process in order to meet a $300-500 per filing price target, which has apparently become the overriding URS consideration; with the “goal” of having a revised URS policy and providers in place by June 2013. We are wary that if the URS elements are reopened that completion goal date will not be met, causing further unnecessary delays in new gTLD rollouts. But in any event it seems quite clear that the final elements of URS policy, much less its actual implementation, will still be in flux when the new .Com agreement commences this December. All the more reason to avoid writing it into that contract.
Shortly after submitting our reply comment we noted that the Internet Committee of the International Trademark Association (INTA) had filed its own reply statement (available at http://forum.icann.org/lists/com-renewal/msg00040.html). And we further noted that this INTA statement pays ICA the backhanded compliment of taking issue with our original post -- and makes another rather revealing statement about its stance on UDRP reform:
Contrary to the assertion of the Internet Commerce Association (ICA), the Committee believes that requiring the .Com registry to adopt the URS is consistent and congruent with its position that the UDRP should not be opened up to policy review until the gTLD launch is largely behind us and we have the benefit of experience in how the UDRP harmonizes with the URS and other new gTLD RPMs.
We believe that the raising of this alleged “inconsistency” may divert attention from the real issue, namely the glaring exclusion of the .Com Registry from the RPMs that will apply to all new gTLDs…It is also consistent in requesting that the largest legacy Registry, .Com, be compelled to come into line with the requirements of all new gTLDs without simultaneously subjecting the existing UDRP mechanism to evaluation and revisions. Once the RPMs are implemented in the new gTLDs and running smoothly, and once all existing registries have also been brought into the fold of these new procedures, then it may be appropriate to look at all existing dispute resolution procedures and evaluate them as a whole. (Emphasis added)
We are bemused by the fact that INTA and other IP interests are now decrying the fact that there will be a two-tier rights protection system, one for new gTLDs and another for incumbents, because that is the very result they sought during the period between the ICANN Board’s 2008 Paris vote to proceed with the new gTLD program and 2011 Singapore vote to approve the Applicant Guidebook and move on to the application phase. Throughout that debate ICA was arguing against the creation of URS and other new RPMs and for comprehensive UDRP reform that could have addressed the fact that the UDRP has migrated from its original goal of being a fast and inexpensive arbitration process to address clear cases of trademark infringement – the very goal that URS is now supposed to meet. We made the point repeatedly that it would be superior to have one improved process at all gTLDs rather than a flawed UDRP for incumbents alongside new RPMs for new gTLDs. But we lost that argument, as did many others with similar views, just as we failed to convince the GNSO Council to proceed with UDRP reform sooner rather than later.
But now the INTA Internet Committee is taking the wholly disingenuous position that the ICANN debate on RPMs for new gTLDs somehow decided the question of their application to incumbent gTLDs. We believe it was crystal clear to everyone who participated in that protracted process that what was on the table only applied to new gTLDs, and that the major policy question of imposing those RPMs on incumbent gTLDs would only be discussed after substantial experience with them. Indeed, we strongly suspect that if the question had been whether URS and the other new RPMs should be applied to .Com et al the debate would still be going on today and new gTLDs would remain a distant goal. To now suggest that the .Com contract should require URS without any subsequent policy discussion is nothing but a highly questionable “bait and switch” tactic that is quite disrespectful to registrant rights and the ICANN policy process.
But read that INTA statement carefully, because their position is that “it may be appropriate to look at all existing dispute resolution procedures and evaluate them as a whole” – that is, to engage in UDRP reform -- only after all the RPMs have been implemented in the new gTLDs as well as at .Com and the other incumbents. That’s a very clear signal that INTA and other IP interests will likely oppose any UDRP reform process as “inappropriate” if it succeeds in imposing URS on incumbent gTLDs by contract amendment.
And, putting ourselves in their place, we’d probably also oppose engaging with other members of the ICANN community and letting them put their dissatisfactions with UDRP on the table if we could avoid that policy discussion and get one-sided “reform” by requiring the new RPMs by contract – especially as UDRP ‘neutrals’ continue to creatively establish new causes of action against registrant practices that were considered non-infringing in the past. Why negotiate a balancing of trademark and registrant rights if you can get what you want through an alternate approach that excludes others?
ICANN has a very clear choice here. It can recognize that the imposition of URS on 100 million-plus .Com registrants is a very significant policy issue that should be addressed through the standard multi-stakeholder policy process after we have some real world experience with that RPM. Or it can capitulate to IP sector tactics that seek to avoid reasoned debate and shove other interests and viewpoints aside. We certainly hope it does the right thing.
ICA’s reply comment follows---
Philip S. Corwin, Founding Principal
1155 F Street, NW Suite 1050
Washington, DC 20004
May 17, 2012
By E-mail to: email@example.com
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601
Re: .Com Registry Agreement Renewal – Reply Comment
I am writing on behalf of the members of the Internet Commerce Association (ICA) in regard to ICANN’s reply period on the proposed renewal of the .Com Registry Agreement which would allow VeriSign to continue operating the largest gTLD for an additional six-year term running from December 1, 2012 through November 30, 2018. This Reply Period was opened on April 27th and closes today, April 26th. ICA filed an initial comment on this matter on April 26th, and the text of that comment can be found at http://forum.icann.org/lists/com-renewal/msg00032.html .
ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.
Imposition of URS on .Com Through Contractual Fiat
In our April 26th letter we stated:
We applaud ICANN’s rejection of trademark interest entreaties that it impose URS and other untested new RPMs on .com through contractual fiat, as well as ICANN’s recognition that the rights and legitimate expectations of registrants require that any consideration of this matter be within the normal policy development framework. We also urge ICANN to initiate the long-delayed implementation process for URS so that the community may review its operational aspects and the qualifications of prospective arbitration providers well in advance of the first delegations of new gTLDs.
That letter also addressed comments field by the Internet Committee of the International Trademark Association (INTA), stating:
We take serious issue with comments on the proposed contract such as those of the International Trademark Association (INTA) which assert that ICANN’s reasoning on this critical matter is somehow inconsistent with its prior statements regarding RPMs at new gTLDs. Rather, what is inconsistent is for INTA and other trademark interests that called for delay of the initiation of UDRP reform consideration so that the performance of the new RPMs could be considered in that context to now try to subvert ICANN’s standard policymaking process by urging imposition of URS on .com absent any experience with it. We also take issue with the notion that “harmonization” requires imposition of URS on .com and other incumbent gTLDs at some future point in time. We believe that the experience with URS and other new RPMs needs to be thoroughly evaluated after a substantial period of use at new gTLDs before that debate should be initiated, and also believe that the .com registry is qualitatively differentiable from all other gTLDs and may well deserve and require some distinct contractual anomalies well into the future.
Today we wish to also address the comment letter filed by ICANN’s Intellectual Property Constituency (IPC) on April 26th. The IPC comment urges ICANN to require VeriSign to implement URS in .Com at some point in time during the six-year term of the renewal contract, stating:
As noted in the Executive Summary, some allowance for the fact that ICANN has not yet articulated all rules applying to those TLDs or identified the service providers to be responsible for administration of the RPMs makes immediate application of the RPMs on the renewal agreement’s effective date unreasonable. However, it would appear equally unreasonable to defer any and all implementation of these RPMs for the full six-year duration of the renewal term. To say that the RPMs should undergo a “ramp up” period in the new gTLDs before they should be required in legacy gTLDs should not equate to a six-year free-pass for the largest gTLD registry from compliance with the extensively debated and finally approved RPMs.
While we concur with the IPC’s recognition that it would be unreasonable to require the immediate imposition of URS and other new rights protection mechanisms (RPMs), we take strong exception to its view that the contract should specify a date certain for their use at .Com and that failing to do so amounts to a “free pass”. The IPC is well aware that the GNSO Council, under strong pressure from the IPC and other trademark interests, has deferred the initiation of UDRP reform until eighteen months after the launch of the first new gTLD in order to allow the reform process to consider the performance of the new RPMs. Assuming that ICANN is able to stick fairly closely to its anticipated initial approvals of new gTLDs in the first quarter of 2013, the UDRP reform process should start around mid-2014. Even if that process takes an extended period of 18-24 months final recommendations should be ready for ICANN community and Board consideration in the first half of 2016. Since the renewal contract for .Com extends through December 2018, the results of that UDRP reform process will be fully applicable to .Com and other incumbent registries to the extent that final adopted recommendations make them so.
Therefore, deferring a decision on imposition of URS and other new RPMs on .Com does not provide it with a “free pass”. Rather, it properly assures that no premature decision on that question will be made until ICANN’s multistakeholder policy process has a full opportunity to consider the initial performance of new RPMs at new gTLDs. That is the reasonable and responsible process that should be followed – making a decision now to impose URS or other RPMs on more than 100 million .com domains absent any real world experience would be unreasonable and irresponsible.
We also take issue with the IPC’s attempt to equate new RPMs with other changes that have been made in the proposed .Com renewal contract – such as requiring the .Com operator to support IPv6 access to the Shared Registration System; supporting DNSSEC; complying with IDNA and IDN guidelines; and other features which have been transposed from the standard new gTLD registry agreements. We believe that these technical updates to the .Com agreement can be readily differentiated from the new RPMs, especially URS. Unlike these technical updates, URS affects the substantive and procedural due process rights of registrants in more than 100 million .com domains and involves the balancing of those rights against those of trademark holders as well as the fashioning of an effective and fair arbitration process. Current .Com registrants acquired their domains with full knowledge that they would be subject to the UDRP but with no notice of or consent to the URS. As ICANN’s own announcement of the .Com renewal contract aptly noted:
…registrants have procured domain names in existing gTLDs with an understanding of the landscape of existing RPMs. New RPMs affect registrants, as well as registries and registrars. They should arguably be introduced in existing gTLDs after a bottom-up discussion… When creating the new gTLD rules, existing registrants (and registries) were not consulted with the idea that those protections would be implemented in existing gTLDs without further community discussion.
Related Uncertainty of URS Policy and Timing
Our prior letter on this subject also noted the failure of ICANN to initiate an open implementation process for the URS, similar to the one we have been participating in for the Trademark Clearinghouse, stating:
We remain hopeful that ICANN will finally initiate the implementation process for URS as soon as possible so that we can understand in detail how it is expected to operate, and see whether any credible arbitration body can be secured to administer it at the ultra-low pricing promised to trademark owners. However, in this regard we are dismayed and bewildered that ICANN’s newly constituted New gTLD Program Committee adopted a Resolution at its initial April 10th meeting that “directs staff to provide a briefing paper on the topic of defensive registrations at the second level and requests the GNSO to consider whether additional work on defensive registrations at the second level should be undertaken”. This action has created additional confusion and anxiety about the final pre-launch status of URS and other new gTLD RPMs, and provides trademark interests with yet another opportunity to advance already-rejected arguments that the burden of complainant proof and post-decision options be altered to convert URS from a narrow supplement to the UDRP into a bargain basement supplement at a severe cost to registrant due process rights. We again urge ICANN to immediately initiate the long-delayed implementation process for URS, including publication of a request for Proposals (RFP) and establishment of an Implementation Advisory Group (IAG) similar to that constituted for the Trademark Clearinghouse. As URS is required to be in place at the time that the first new gTLD is delegated, an event likely to occur in the first part of 2013, it is critically important that ICANN provide sufficient time for development of the implementation process and feedback from the entire community including potential registrants in new gTLDs.
Our concerns in this regard have only been substantially heightened by intervening events since April 26th.
On May 1st ICANN released its draft FY 13 Operating Plan and Budget, which contained the following item of direct relevance:
Uniform Rapid Suspension (URS) – $175K
At present there is a significant gap between the features specified for the URS procedure and the desired cost. In order to bridge this gap we will: hold two summit sessions to reconfigure the URS to arrive at a lower cost model (one session in FY12 budget and another in this FY13 plan), conduct a process to develop and finalize URS Model in consultation with current UDRP providers and community members; and conduct RFP based on URS Model and select URS providers. The goal is have a URS program in place and providers contracted and onboard by June 2013.
We had no idea where this “summits” concept had come from or what it meant, nor did any of the many individuals involved with the ICANN policymaking process who we made follow-up inquiries to. That included members of the GNSO Council, which added this item to the agenda of its May 10th meeting. The Council received the following responsive e-mail from Kurt Pritz, ICANN’s Senior Vice President for Stakeholder Relations, in explanation (http://gnso.icann.org/mailing-lists/archives/council/msg13030.html):
Uniform Rapid Suspension:
There is a budget line item identified as "URS Summit" Implementation work conducted on the URS to date indicates that the the implementation will not attain the cost target of $300-$500 in URS fee per case. This is based on discussions with WIPO staff, direct communication with the IPC, and examples understood from the ICM registry and Nominet. Because the fee target is a primary goal of the URS, additional work and study should be undertaken to determine if amendments to the program might attain the fee goal and retain the safeguards and other features of the program. This study must be undertaken by a community group. While the scope of the effort is not yet defined, it was necessary to reserve resources for the work in the ICANN's FY13 budget. The line item in the budget is the placeholder for those resources while the best way to accomplish the work can be designed. Again, the work will be done through a bottom-up, community discussion similar to the the work done to create and review the URS in the first instance. The timing of the budgeting process required that we create the line item before planning for this work could be drafted and worked through the community.
We are extremely concerned that ICANN staff have discussed implementation of the URS with only a narrow select group, including WIPO and the IPC, but not with other third parties and ICANN constituencies having a strong stake in its operation – including new gTLD applicants as well as representatives of registrants such as the ICA. And we reject the notion that URS policy should be reopened to attain a pricing target that never appeared realistic in the first place – in our view, policy should dictate pricing, not the other way around, and elevating price to an overriding goal risks serious damage to the due process rights of registrants.
However, it is crystal clear from these recent budget developments that the URS is a long way from provider solicitation through RFPs, much less launch, and that its substantive policy elements may unwisely be reopened for debate. As the IPC’s own comment notes, the present rules for URS and other new RPMs “were refined after extensive discussion far too protracted to detail”. Given that prior extended and divisive debate over URS we are extremely skeptical that we will see “a URS program in place and providers contracted and onboard by June 2013” if its policy elements are reopened to accommodate low pricing of URS filings. In fact, we fear that such reopening will result in a protracted delay that will prevent new gTLDs from opening domain sales to the general public and thereby begin to exert some market pricing pressure against .Com.
The revived uncertainty over the final policy details of the URS, as well as the strong possibility that its introduction may be substantially delayed, argue even more strongly against its imposition on .Com registrants through contractual fiat. Let’s get the URS policy finalized, get a credible arbitration provider or providers selected, and then see how it operates before considering its imposition on .Com. That is the reasonable and responsible way to proceed on this key matter affecting registrant rights in more than 100 million .Com domains.
ICA appreciates this opportunity to file this reply comment regarding the draft renewal Agreement for VeriSign’s continued operation of the .com registry.
Thank you for considering our views in this matter.
Philip S. Corwin
Counsel, Internet Commerce Association