The dog days of August are providing a welcome respite from what has been an incredibly busy year at ICANN and in Washington, as well as a chance to catch up and attend to things we’ve been meaning to get to as soon as soon as the crisis de jour was dealt with.
One of those is to provide ICA members and others in the domain investment community with a sense of what we were up to at the last ICANN meeting in Sydney (as we start thinking about preparation for the next and final meeting of 2009 taking place late October in Seoul, where the third iteration of the Draft Applicant Guidebook for New gTLDs, due out mid-September, is expected to be the primary focus of debate, discussion and dialogue). Sydney’s a glorious city and we enjoyed our stay there immensely, but the majority of the time we were in the meeting hotel busy doing what ICA members expect us to – gathering intelligence, networking, lobbying, and speaking out at the public forum opportunities that ICANN meetings provides to state our case on the record.
What follows are official ICANN transcripts of remarks delivered by ICA Counsel Philip Corwin at two public sessions in Sydney – the first a focused session on proposed trademark protections at new gTLDs, the second the Public Forum that affords attendees an opportunity to communicate directly to the entire ICANN Board. We used these opportunities to state our case against the proposed Uniform Rapid Suspension (URS) policy on both substantive and procedural grounds, as well as to counsel against any further restrictions on geo-names at new gTLDs. We are hoping that ICANN takes our viewpoint to heart so that we are not compelled to make even more forceful comments in South Korea.
New gTLDs Implementation Consultation Session
ICANN – SYDNEY
24 June 2009
Part 1 – Trademark Protection
>>PHILIP CORWIN: Philip Corwin, counsel to the Internet Commerce
Association, representing domain investors and developers and the
companies that serve them.
We strongly oppose the URSP. And I will continue to refer to it as
the "URSP." We believe it’s a major new policy.
And I want to focus on the statement made a minute ago and the
sentence on page 25 of the final report, statement — the sentence
reading, "The URS is intended to supplement and not replace the UDRP."
We believe that sentence is completely erroneous. And our evidence
for that is the April 3rd letter sent by the World Intellectual
Property Organization to ICANN in which WIPO stated — WIPO proposed an
expedited suspension mechanism which was nearly identical to the
recommended URS and stated that their analysis of 400 UDRP cases — and
I quote, show that an ESM limited solely to identical matches would
quote — would capture, quote, a significant majority of UDRP disputed
domain names.
Now, if an identical match expedited procedure captures a significant
majority, wouldn’t it be reasonable to assume that an expedited
procedure which extends to confusingly similar names, particularly when
there’s no limitation on how many degrees of separation from the
original trademark that name might be, and given that the costs of
bringing a URS are substantially lower to the complainant and that
there is no cost to acquiring a name if successful, would capture the
vast, vast majority of UDRP cases and would, in fact, be the new UDRP
at all new gTLDs?
>>PHILIP CORWIN: Well, I admire your attempt to distance yourself
from your April 3rd letter, but I don’t believe you’ve responded to my
question.
We do not believe the differences are significant enough to draw a
different conclusion. But also referring to that April 3rd letter, in
that same letter, WIPO questioned whether an expedited suspension
provider could ever decide a confusingly similar claim on an expedited
basis.
Is WIPO now changing that position and supporting the IRT and stating
that this can be done on an expedited basis?
PHILIP CORWIN: I will conclude by stating that we believe that the
URSP would be the new UDRP at new gTLDs, that it is basically UDRP
reform undertaken from only one side of the question, without taking
into account registrants’ problems with the current UDRP, and that
further, it is a major policy change and should go through the normal
ICANN policy process and not simply be adopted without further
development.
Thank you.
[ Applause ]
http://syd.icann.org/files/meetings/sydney2009/transcript-public-forum-25jun09-en.txt
ICANN Public Forum
ICANN – Sydney
Thursday 25 June 2009
>>PHILIP CORWIN: Good morning. Chairman Thrush and members of the
board, I’m Philip Corwin, counsel to the Internet Commerce Association,
representing domain investors and developers and the companies they
serve. And our members and the customers they provide services to
collectively own many millions of domains. And as we believe that
whatever is adopted for new gTLDs will, in rather short order, become
the dispute mechanism for incumbent gTLDs — in fact, I’ve heard
suggestions at various meetings here in Sydney that that be done in
fairly short order. Even if our members never buy a single domain at
the new gTLDs, we believe they will be affected by your decision on
this. And, of course, if the new gTLDs are to be successful, you want
people like that to be taking advantage of the new opportunities for
competition and serving Internet users they provide.
Since the beginning of this process, we’ve been calling for — very
strongly for the establishment of strong, cost-effective, and readily
implemented protections for rights holders. We are not — in no way
against that. But we’ve also been saying that we should not have
fundamental change of the dispute process that will substantially
supplement or replace the UDRP without a process that ensures that
registrant concerns about current UDRP issues are heard.
And, unfortunately, we believe that this IRT process, while I believe
the people involved in it were acting in good faith and worked very
hard, did not provide that opportunity. I won’t go into details. Your
ombudsman knows that we have raised objections from the beginning that
the IRT was an ICANN constituent body which was not operating in
conformance with the bylaw requirements that constituency bodies
maximize transparency and fair representation. And one example is
their vote at the first meeting to operate in a confidential manner and
not to release transcripts or MP3s. And we, frankly, found the
ombudsman to — process somewhat — substantially lacking as an
accountability mechanism.
Let me turn to the substance of our report. Our principal concern is
with the URS, which we call the URSP. We believe that this is a major
policy and that will not just supplement the UDRP at new gTLDs, but
that, in fact, it is — will be the new UDRP at the new gTLDs.
And on that point, we rely on a submission from the World Intellectual
Property Organization to you dated April 3rd in which, in analyzing the
effect of their very similar proposal, called the ESM, the Expedited
Suspension Mechanism, they reviewed 400 UDRPs and found that an
expedited process which only dealt with names that were identical to
the text or word elements for trademarks would capture, and I quote, a
significant majority of UDRP disputed domain names.
Now if an identical process would capture a significant majority, we
believe that when you expand that out to confusingly similar names, as
the URS would do, you would capture the vast, vast majority of cases
that are currently dealt with in the UDRP. And then when you add to
that the extremely low cost for complainants, which could be as low as
$1.50 per name disputed in mass filings, and the fact that complainants
would not have the cost of acquiring a domain that they wanted taken
out of being resolved, we think that this — the UDRP will basically
disappear at new gTLDs if the URS is adopted as proposed.
Our other concerns about the URS are the — well, the potential abuse
encouraged by the extremely low cost of filing, the lack of adequate
sanctions to deter complainant abuse. We don’t think suspension from
the process for one year after three separate incidents of intentional
abuse is in any way adequate to deter such abuse. We don’t think an
inadequately paid examiner can possibly provide adequate due process to
registrants or implement the supposedly higher evidentiary standard in
this process and the great expense for the outright absence of a
substantive appeals process for registrants who believe that their
domains have been unfairly suspended. In short, we believe the URSP is
UDRP reform undertaken solely from the viewpoint of complainants,
without input from — adequate input from registrants.
We did get to testify for 30 minutes in San Francisco. But it’s in no
way equivalent to being part of the process day in and day out.
Quickly, another element. We share the concerns of many on the
globally protected marks list as to whether it can be implemented and
whether there’s a firm legal basis.
On the positive side, we believe that the standard sunrise
registration process that’s been recommended has substantial merit and
that the I.P. clearinghouse, if we work out some details, could be a
benefit to both trademark owners and registrants who want to avoid any
unintentional infringement.
So, wrapping up, we believe that the policy that this would implement
of having a one-sided URS at new gTLDs while maintaining a flawed,
deeply flawed, UDRP at the incumbents, is the wrong policy, would have –
– We should have one much-improved dispute process against all gTLDs,
both new and incumbent.
We believe that setting the precedent of allowing a single
constituency to control the agenda and membership of a short-term ad
hoc group and have its recommendations implemented without further
community-wide policy review would be a terrible precedent, a very
dangerous precedent. Suggest — we suggest —
>>PETER DENGATE THRUSH: Mr. Corwin, I hate to interrupt, but you did
say you were wrapping up, and you’ve gone on for very much longer than
the 2 minutes that I suggested was a good guide. And so you’ve used up
a lot of time of the people behind you.
>>PHILIP CORWIN: We hope the IRT report can be a starting point for
a broader process and includes the entire affected community, with the
goal of putting in place a balanced expedited process in place that
does not delay the introduction of new gTLDs.
Thank you very much for your time.
>>PETER DENGATE THRUSH: Thank you.
[Later that day we provided the following comment regarding geo domains, taking substantially less than our allotted two minutes to do so.]
>>PHILIP CORWIN: Philip Corwin, ICA.
We are in strong agreement with views we have also heard voiced by
brand owners at this meeting that the draft applicant guidebook has
conceded too much to the GAC on the issue of geo names at the second
level. Geo domains are one of the great success stories at the
incumbent gTLDs.
Geo locale is one of the principal means by which consumers searching
for products, services, and information find it on the Internet. And
as there are no trademark rights in (inaudible)
unjustifiable restrictions on the use of geo names at the second level
would be a disservice both to consumers and to the economic prospects
of new gTLDs.
Thank you.
>>PETER DENGATE THRUSH: Thank you very much for that. And as I said
earlier, we are struggling with the — balancing those different
interests.