The ICANN Public Comment process can be severely frustrating and unsatisfying, as proven once again by ICANN’s September 30th publication of final Rights Protection Mechanisms (RPMs) for new gTLD registries[1], just twelve days after the September 18th deadline for submitting written comments. The final RPMs include a completely unchanged Trademark Notice that fails to meet ICANN’s stated goal that “The Claims Notice is intended to provide clear notice to the prospective domain name registrant of the scope of the Trademark Holder’s rights.” (emphasis added) Even worse, ICANN’s rationale for refusing to adopt a single modification calls the entire usefulness of the public comment process into question.
ICA’s totally ignored input to ICANN[2] consisted of modest and reasonable suggestions to align the text of the Notice with that stated goal by:
- Amending the Trademark Notice to provide registrants with more comprehensive information regarding the legal distinction between registered trademarks and their variants.
- Requiring rights holders who register such variants in the Trademark Clearinghouse to provide a hyperlink to the UDRP decision on which such registration is based, with such hyperlink(s) to be provided to the registrant in the Notice.
- Requiring rights holders who register variants based upon court determination to provide a hyperlink to the court case in which its use was found to be infringing; or, where an online database of court decisions is unavailable, to provide as much information as is available to assist the potential registrant in finding the text of the relevant court opinion. Such information should in turn be included in the Notice.
- Requiring rights holders who register terms based on prior UDRP or court decisions to advise ICANN at the time of registration whether such decision was subsequently appealed and, if so, of the status and/or final result of the appeal. Again, such supplementary information should be conveyed to the registrant in the Notice.
We believed that all relevant parties would have benefited from these suggested modifications:
- Domain registrants – expanded information will provide potential registrants with a sounder basis for determining whether they wish to complete or abandon a domain registration following receipt of a Trademark Notice by being better able to gauge the probability of being subject to and losing a potential UDRP, URS, or trademark litigation action.
- New gTLD registry operators – better informed potential registrants will be less likely to abandon prospective domain registrations for which they intend no bad faith registration and use.
- Rights holders – more comprehensive information receipt by a prospective registrant may have bearing upon whether a completed registration was undertaken in bad faith.
The Report of Public Comments[3] contains this staff-generated explanation of why nothing was done to accommodate ICA’s concerns and suggestions:
Analysis:
The form of the Claims Notice is the product of significant community discussions, with the goal of providing clear notice to registrants of the scope of the rights contained. The additional fields relevant to the additional labels (i.e., labels found to have been previously abused) have been incorporated into the existing framework of the Claims Notice and additional changes to the text, if undertaken, should be subject to a broader community discussion.
Let’s parse that rationale.
In regard to the significant community discussions, here is the capsule history provided by ICANN itself in its September 30th notice:
A draft version of the RPM Requirements was published in April 2013 for community discussion and input. ICANN requested and considered input to this document on multiple occasions. This final version reflects significant changes based on stakeholder input received during the ICANN meeting in Beijing in April, an open consultation conference call attended by more than 50 participants in April, comments provided by various individuals and stakeholder groups in May and June, continuing discussions during the ICANN meeting in Durban in July, and a formal public comment period during August and September.
That history makes clear that the “formal public comment period” took place during the last two months, yet the staff analysis seems to say that comments on the final draft of the Trademark Notice were not considered because the document was essentially locked down and final before the formal comment period was opened. In that case, why even bother having a formal comment period? ICANN should have at least alerted the public when it opened that there was no point in submitting comments on the Trademark Notice because it was a done deal.
Second, the Trademark Notice still fails to provide “clear notice to registrants of the scope of the rights contained” because it fails to differentiate in any way between registered trademarks, which clearly encompass recognized rights, and trademark variations found to be abused under the specific facts and circumstances of prior decisions – which may provide the basis for a trademark holder to file a UDRP, URS, or judicial claim based upon the registration and use of a domain at a new gTLD, but in which that trademark owner has no rights akin to those accompanying registered trademarks. By conflating these two very separate types of entries into the Trademark Clearinghouse ICANN is coming perilously close to violating its pledge that the new gTLD RPMs will protect existing rights but will not create new rights.
Third, the Claims Notice still only contains a place to enter relevant UDRP decisions but not relevant court decisions, even though the adoption of Trademark-plus-Fifty made both eligible as a basis for registration in the Clearinghouse. The refusal to make that editing change just baffles us.
Fourth, w
e think it’s petty to not adopt our suggestion that hyperlinks to the relevant UDRP or court decisions be included to assist potential registrants in finding and reviewing them. The Clearinghouse will already have them, and most recipients of Claims Notices will be unsophisticated registrants with little understanding of trademark law and a disinclination to hire an attorney just to complete a domain registration. ICA members, on the other hand, are well versed on these matters and to the extent that they register domains in new gTLDs will be careful to avoid any domains that could obviously trigger an arbitration action by a rights holder. If registrants are indeed ICANN’s number one priority, why not give them some assistance that doesn’t cost a penny to provide?
Now the staff analysis does hold out some hope for correcting the Claims Notice’s flaws in the future with this statement — additional changes to the text, if undertaken, should be subject to a broader community discussion. But, familiar as we are with ICANN procedures, it’s quite unclear how such a broader community discussion would be initiated or when it could take place, now that the RPM Requirements have been deemed Final. Then again, we thought that submitting comments during the formal public comment period was a form of broad community discussion that actually promised some hope for reasonable edits of the Trademark Notice, and that was clearly our misunderstanding based on the feedback of the staff analysis. Again, what was the point of opening the Trademark Notice to formal public comment if staff was already of a mind that no substantive changes would be permitted?
Again, the real losers here will not be ICA members, who are professional domain investors, but members of the general public who we believe will generally pull back from registering any domain name that triggers a Trademark Notice out of fear of being hit with an arbitration claim or lawsuit – even though their contemplated use may be entirely in good faith and non-infringing. Registry operators of new gTLDs will also suffer diminished domain registrations as a result.
Our main motivation for pushing for a more accurate Trademark Notice is the uncertainty in regard to how receipt of one will bear on the question of bad faith registration in a subsequently filed URS or UDRP involving a domain at a new gTLD. We don’t believe that such receipt should be presumptive evidence of bad faith, yet we assume that question will be answered in significantly inconsistent ways by individual URS and UDRP panelists — as it’s an area in which ICANN has abdicated responsibility by placing URS providers under a thoroughly inadequate two-page Memorandum of Understanding, and by resisting even the notion of entering into standard agreements with UDRP providers.
Summing up, we filed what we thought were good faith suggestions for improving the Trademark Notice to make it consistent with ICANN’s stated intent and more helpful to registrants. It’s quite distressing to learn that we needn’t have bothered because the matter was already closed so far as ICANN staff were concerned.