ICA Tells ICANN That The URS Is The Wrong POLICY For the DNS

Yesterday the ICA filed its comment letter with ICANN regarding the
final Report of the Implementation Recommendation Team (IRT). While
reciting the constructive role that ICA has played on the new gTLD
process since its inception, the letter takes aim and blasts away at
the proposed Uniform Rapid Suspension (URS) system as stripping
registrants of due process rights, providing inadequate time for
registrant responses, lacking adequate sanctions for complainant abuse,
and failing to provide acceptable and affordable means of substantive
appeal. It also lays out the case that the URS is really the URSP – a
major and radical new POLICY initiative and not a mere technical
implementation detail that will displace the UDRP at all new gTLDs, and
that it therefore cannot be adopted by ICANN’s Board without further
review and modification by the entire ICANN community under the
auspices of the Generic Names Supporting Organization (GNSO), ICANN’s
policy-making body. Therefore, ICA calls for the initiation of an
expedited Policy Development Process (PDP) that can result in balanced
and reasonable UDRP reforms responding to the legitimate concerns of
trademark owners and registrants being put in place prior to the last
quarter of 2010 across all gTLDs, both incumbent and new.

While we have not yet had an opportunity to review every comment on the IRT filed at http://forum.icann.org/lists/irt-final-report/ we were particularly impressed by those of GNSO Council Chair Avri Doria (in her individual capacity), stating, “implementation
of the IRT recommendation without subjecting it to the PDP process
would severely undermine ICANN’s defined processes and in so doing
threaten ICANN credibility as an open and accountable public interest
corporation… This is indeed part of the claim I am making in this
comment: the work of the IRT, if it goes directly from the IRT to
implementation will not only constitute new top down policy but some
parts of it will be new policy that the GNSO specifically decided there
was no consensus for making. Going beyond the consensus making purview
of the GNSO to create policy as part of the implementation cycle of the
program not only directly contradicts the policy made by the GNSO but
also endangers the legitimacy of the entire consensus policy process.
Further one of the recommendations, the Uniform Rapid Suspension
System, constitutes an entirely new policy mechanism that affects
previous policy, the UDRP, without proper policy review. (http://forum.icann.org/lists/irt-final-report/pdfNhBqKA4CfN.pdf)

We also commend to ICA members the excellent comments filed by
trademark attorney Kathy Kleiman of behalf of ICANN’s Non-Commercial
Users Constituency (NCUC) regarding the biased process employed by the
IRT and the insupportable substance of its Report recommendations (see http://forum.icann.org/lists/irt-final-report/msg00206.html and http://forum.icann.org/lists/irt-final-report/msg00208.html).

We also note that the Registrar Constituency, a group that has
generally favored new gTLDs, nonetheless filed a lukewarm position
statement:
The RC supports the spirit of the IRT.  Individual RC Members,
however, have expressed concern regarding some of the proposed
protection mechanisms in the IRT Report. Additionally, some RC Members
have expressed concern regarding the process used in developing the IRT
Report.  Notwithstanding the IRT’s good faith intentions, these RC
Members believe that the process employed in developing the IRT Report
is not consistent with the bottom-up consensus process to which ICANN
is committed.  These RC Members note that the IRT process, however well
intended, has taken a largely top-down approach. (http://forum.icann.org/lists/irt-final-report/msg00180.html)

Finally, we note that the Registries Constituency, a group that has
been an enthusiastic supporter of new gTLDs because of the new registry
operator and backend service provider opportunities they will bring,
has nonetheless filed a lengthy statement that starts off with a strong
critique of the IRT’s proposed Post-Delegation Dispute Mechanism
proposals and then goes on to raise myriad technical questions about
the URS proposal, pointing out in the process that the URS is poorly
thought out on a technical implementation basis and that it could well
result in a registrant being blocked from transferring any of their
domains – and would not only prevent a suspended domain from resolving
but would disconnect all services associated with the website,
including e-mail:

B. Uniform Rapid Suspension System (“URS”)
The Final Report proposes ‘freezing’ domain name registrations in
“clear-cut cases of trademark abuse”. It is important to note that the
there is no single EPP status that provides the functionality referred
to as ‘freezing’ a registration in the report. It would likely take a
combination of the following EPP statuses to accomplish this:

• serverDeleteProhibited: prevents deletion

• serverRenewProhibited: prevents renewal

• serverTransferProhibited: prevents transfer

• serverUpdateProhibited: prevents update.

If the URS is adopted, it will be critical in the implementation
plan to define exactly which statuses apply and to carefully analyze
all possible impacts of implementing these statuses. In addition, any
possible unintended consequences and possible workarounds at the
registrar level should be examined. For example, a domain name could be
transferred to a new registrant (keeping the same registrant ID and
updating the contact information); then the new registrant would not be
able to use the domain name. Will changes to EPP contact statuses
be required? If so, implementing prohibited statuses on a contact may
be problematic when a single contact is linked to multiple domain
names. In such a case, this could not be used to prevent a registrant
update (transfer) for one domain name without preventing contact
updates for all of the domain names linked to that registrant.
The Final Report says, "The third-party provider will post a standard
page on the domain name…." Recognizing the fact that registries have no
control over the content of registrants’ web pages and that registrars
may or may not have control over such content, how would the
third-party provider accomplish this task? The
RyC interprets this to mean that the nameservers will be redelegated
from the original registrant delegated nameservers to that of the
service provider. This would effectively not only limit the ability of
registrants to use the domain name for a website, but will also
disconnect any of the services associated with the domain name,
including e-mail. This needs to be made clear in the implementation
plan. In addition, registries will have to be reminded to include in
their contracts with registrars the right to take these actions and
such rights and obligations need to be clearly and conspicuously stated
to registrants in the registration agreements with registrars/resellers.
The Final Report says, “the registry will update the Whois record to
reflect that the domain name is on hold and unable to be transferred or
used for any purpose for the life of the registration (including
renewal by the same or related registrant).” Is this a new technical
specification for registry and registrar Whois displays? As pointed out
in the first paragraph of this section, there is no single EPP status
that provides the functionality proposed by the IRT. Would it be
necessary to modify the EPP protocol to add a new status? (Emphasis added) (http://forum.icann.org/lists/irt-final-report/pdfSd6Vs2BGxa.pdf )

Again, we have not reviewed every posting at the ICANN comment page but
even this cursory review demonstrates that there is broad concern and
criticism about every aspect of the IRT Report, there is no consensus
favoring its implementation, and there is general support for the
proposition that its process was suspect and that many of its
recommendations represent major new policy initiatives which must be
fully vetted through the normal ICANN policy-making process if the
organization is to retain any credibility as being operated through a
bottom-up consensus process.

The next episodes in this drama are the four “Global Consultations and
Outreach Events” on new gTLDs, focusing on trademark and malicious
conduct issues, kicking off with an all-day forum in New York City on
Monday, July 13th. ICA members and other interested parties are urged
to attend to voice their views; registration details and other
information can be found at https://www.registration123.com/ICANN/GTLD/Register.cfm?
ICA Counsel Philip Corwin will be at the New York City meeting to
actively voice our membership’s viewpoints as well as to monitor the
way in which these “consultations” and domain industry participants
planning to attend are asked to advise him at
pcorwin@butera-andrews.com . In particular, we wish to see whether
these programs are balanced in their speakers and presentations or are
instead an ICANN-funded road show in which registrant funds are being
utilized to pay for one-sided presentations by the trademark community
to advocate back door adoption of new policies that strip registrants
of precious rights. If that is the case, we and others will be
protesting loudly.

The ICA’s full comments are below —

 

By E-Mail to irt-final-report@icann.org    

July 6, 2009    

Board of Directors
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601

Re: Public Comment on Trademark Protection (IRT Final Report)

Dear Members of the ICANN Board:

This comment letter is submitted by the Internet Commerce Association
(ICA) in regard to ICANN’s May 29th notice establishing a period for
public comments on the Final Report of the Implementation
Recommendation Team (IRT) proposing trademark protections for new
generic Top Level Domains (gTLDs).

ICA is a not-for-profit trade association representing the direct
search industry. Its membership is composed of domain name registrants
that 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. The ICA is an International Member of
ICANN’s Commercial and Business Constituency and presently has more
than 120 members located in the United States and thirteen other
nations.

Executive Summary

•    The ICA has been constructively engaged with the new gTLD
process since its inception. We unsuccessfully attempted to nominate a
domain investment industry trademark protection expert to the IRT and,
despite his rejection, made an oral presentation to the IRT in San
Francisco. We also provided detailed public comments to the ICANN Board
in Sydney. We stand ready to provide continued constructive input to a
transparent and inclusive process that adequately recognizes the
legitimate rights and interests of domain registrants, including domain
investors and developers.

•    The only proper means by which a balanced and revised UDRP can
be set in place across all gTLDs, incumbent and new, is to immediately
initiate an expedited PDP charged with producing such UDRP reforms to
be set in place prior to the initial launch of new gTLDs in the last
quarter of 2010.

•    The proposed URS will almost entirely displace the UDRP at all
new gTLDs. It deprives registrants of due process rights, lacks
adequate sanctions against complainant abuse, provides inadequate time
for registrant response, and fails to provide an acceptable means of
substantive appeal. It is a major new policy proposal and one that is
unacceptably slanted in favor of trademark interests, and it would be
outrageous for ICANN to ignore the clear lack of community consensus on
this proposal and attempt to implement it absent further review through
an expedited PDP.

•    The proposed GPML appears infeasible and lacking of adequate
basis in trademark law, and its adoption would place ICANN in the
inappropriate and untenable role of treaty organization/legislative
body.

•    The SSRP has considerable merit – as does the IP Clearinghouse, but only if its scope and use is carefully circumscribed.

Discussion

The ICA’s Position Has Been Consistent and Constructive

The ICA has been actively and constructively engaged in the new gTLD
process since it first became open to public comment. We filed an
extensive comment letter regarding the initial Draft Applicant
Guidebook (DAG) on December 15, 2008, and filed a similarly detailed
commentary in regard to the 2nd version of the DAG on April 13, 2009.
Likewise, while we filed a formal complaint with the ICANN Ombudsman
alleging that the IRT was conducting its activities in violation of
relevant provisions of the ICANN Bylaws requiring that its constituent
bodies act to maximize transparency and fair representation, we have
nonetheless engaged with the IRT and many of its individual members in
a thwarted attempt to bring balance and the preservation of adequate
due process rights for registrants into its recommendations. This
engagement with the IRT included traveling to San Francisco to make an
oral presentation to its members, despite the fact that the domain
investment industry was afforded no representation on the IRT
notwithstanding our nomination of an industry expert in expedited,
private sector relief mechanisms for trademark owners.

The ICA position on Rights Protection and the UDRP remains the same as
that stated in our initial December 15, 2008 comment letter:

Strong, cost-effective, and readily implemented protections for
rights holders should be established but they must be limited to
enforcing their rights under existing law and not be premised upon the
creation of broader rights by ICANN fiat. It is for this reason that we
object to creation of a reserve list of trademark names as this would
provide rights protections beyond the geographic and relevant
marketplace limitations of trademark law. We also object to the
imposition of any new rights or procedures that would supplant or
supplement the UDRP absent extensive consideration of such proposals in
a process that ensures that registrant concerns about current UDRP
enforcement trends are heard.

ICA has continually registered our strong objections to any alteration
of the UDRP proposed to be implemented through a fast-tracked one-sided
process, such as that constituted by the IRT, the agenda and membership
of which was controlled by the Intellectual Property Constituency
(IPC). Again, as we stated in our December 15th letter: “Any alteration
or supplementation of the UDRP should not be implemented as a footnote
to new gTLD implementation but only after presentation to and
consideration by the community — and such process must take into
consideration and redress concerns with the present UDRP voiced by
registrants and not simply react to the complaints of trademark
interests.”

ICA also attended and made public comments at the workshop on trademark
protection and malicious behavior held at the recent Sydney ICANN
meeting, and also addressed the ICANN Board on the subject of the IRT
Report at its Public Forum in Sydney. And we plan to attend and
participate at the initial global consultation on new gTLDs to be held
in New York City on July 13th.

We recount the extensive history and the constructive nature of our
engagement on this subject to preemptively refute any allegations that
may be voiced (as some were in Sydney) that strong opposition to the
IRT Report or any of its specific recommendations is “not constructive”
or even “obstructionist”. We believe that a constructive solution to
the challenges posed by a significant expansion of the gTLD space can
only emerge from a policy-making process that encompasses all affected
parties. We recognize that trademark owners are frustrated by the cost
and delay of the current Uniform Dispute Resolution Process (UDRP), as
well as the fact that a successful challenge requires the complainant
to acquire and maintain registration on a domain they never wanted in
the first instance. The ICA is fully prepared to work constructively
with the trademark community to resolve these and other concerns at all
gTLDs – incumbent and new – as we believe the best domain dispute
policy is one that is uniform across all gTLDs. This approach would
have substantial benefits for trademark owners as their major
infringement challenges are at .com and will likely remain so for many
years into the future. This is a far better approach than imposing an
unbalanced URS on new gTLDs while maintaining a flawed UDRP at the
incumbents.

But trademark owners also need to be constructive. They need to
recognize that registrants have legitimate concerns with the UDRP as
well – including its cost, growing lack of uniformity encouraged by
forum shopping, lack of binding precedent, and costly or nonexistent
appeals process.  The introduction of new gTLDs cannot be an excuse for
one-sided UDRP reform that speaks only to the problems and concerns of
complainants while ignoring those of registrants, much less one that
almost entirely displaces the UDRP with a new policy that gives short
shrift to the legitimate interests and due process rights of
registrants. We have heard IRT members state that their Report is not a
trademark “wish list” and that they have made many “compromises”, but
the facts remain that  the Report and the process leading up to it was
controlled by the trademark sector and that the “compromises” were
negotiated within their own ranks.

Likewise, the ICA has never sought to obstruct or delay the
introduction of new gTLDs. We recognize that the expansion of the DNS
has always been part of ICANN’s mission statement and that an objective
and fully formed procedure is required to realize it, and that
registrants can benefit from increased competition and innovative
business models facilitated by new gTLDs. Our overarching concern has
been to assure that the rights and interests of domain investors as
regards registry pricing, trademark protections, geographic names, and
other critical issues are recognized and preserved as the process goes
forward. Addressing these legitimate concerns is in the best interest
of ICANN and gTLD registry applicants, as excessive and unbalanced
treatment of trademarks and geographic names, along with the potential
for differential pricing by registries, will substantially dampen
demand for domains at new gTLDs and weigh heavily against their
ultimate economic success.

Our call for the IRT Report to be the starting point for a transparent
and fully inclusive Policy Development Process (PDP) to develop
balanced trademark protection mechanisms – a call echoed by many others
at the Sydney meeting – is not an attempt to  unreasonably delay the
introduction of new gTLDs at all, much less obstruct them. We believe
that an expedited PDP can be undertake and result in balanced and
effective UDRP reforms being put in place before the first new gTLD
opens for business in the last quarter of 2010. In the interim, a
“placeholder” notice in the DAG can simply advise prospective gTLD
applicants that an expedited PDP has been initiated in this regard, and
that they shall, be expected to fully comply with whatever policy
changes are adopted. We understand that there are precedents for this
approach, and compliance with improved and balanced trademark
protections should not cause any legitimate gTLD applicant to hesitate.
Further, it is quite possible that balanced and effective UDRP reform
can be undertaken as a two-step process (such as is occurring now with
amendments to the Registrar Accreditation Agreement (RAA)), with
consensus matters being rapidly implemented while more contentious
subjects are accorded further study and negotiation.

Finally, at a time when ICANN’s relationship to the U.S. government
under the Joint Project Agreement (JPA) is undergoing review in advance
of its September 30th termination date, and when ICANN’s future
relationship to other multinational organizations is also in flux, it
is especially important that ICANN demonstrate its continued commitment
to a bottom up, consensus driven policy development process. That
commitment must be demonstrated by an admission that the URS and other
IRT Report proposals are major new policy initiatives that can only be
put in place after broader review and input from the entire ICANN
community.

The URSP is the New UDRP

Our principal objection to the IRT Report is its proposal for a Uniform
Rapid Suspension (URS) system at new gTLDs. The IRT claims that the URS
is “intended to supplement and not replace the UDRP” but even cursory
analysis leads to the conclusion that the URS will almost entirely
displace the UDRP at new gTLDs (and trademark interests have already
openly voiced their desire to see the URS imposed upon incumbent gTLDs
as rapidly as possible). Further, we have deliberately chosen to refer
to the URS as the URSP because it would clearly be a major new POLICY
for domain name disputes. As it is a policy, it would be completely at
odds with ICANN’s professed commitment to a bottom-up, consensus policy
process to implement this recommendation representing primarily the
viewpoint of a single constituency. That is why we believe it is
mandatory that ICANN convene an expedited PDP under the auspices of the
Generic Names Supporting Organization (GNSO) which is the ICANN entity
charged with developing consensus domain name policy.

There can be little doubt that the URSP will displace the UDRP. First,
the elements that must be demonstrated by a complainant are identical,
but for the requirement that the complaint involve a trademark
registered in a national regime meeting a specified qualitative
standard. While the required evidentiary standard is “clear and
convincing evidence”, rather than the UDRP’s somewhat lesser
“preponderance of the evidence”, we believe that an inadequately
compensated examiner working within an extremely expedited process
where low costs encourage the simultaneous filing of multiple
complaints will have little ability or incentive to ponder the hazy
dividing line between such subjective standards. The URSP’s
displacement of the UDRP is also assured by its absurdly low filing
costs (as low as $1.50 per disputed domain in simultaneous filings
against 101-200 domains) and the fact that a successful complainant
will not incur the cost of taking over and paying for the continued
registration of a successfully challenged domain. These very same
factors will encourage abuse by complainants even as inadequately
compensated and overburdened examiners find it infeasible to accord
substantive and procedural due process to registrants.

The conclusion that the URSP will displace the UDRP is further
buttressed by an analysis conducted by the World Intellectual Property
Organization (WIPO). An April 3, 2009 letter from WIPO to ICANN states
that an analysis conducted in conjunction with their own proposal for a
similarly expedited suspension process found that limiting it to
domains names that were identical to textual or word elements of a
trade or service mark, or which included textual or word elements that
were identical to those marks, would “capture a significant majority of
UDRP disputed domain names”. If
an “identical” test would capture a significant majority of UDRP cases,
then an “identical or confusing similar” standard, such as is proposed
in the URSP, would clearly capture the overwhelming majority of UDRP
filings. That same WIPO letter also urges consideration of whether
an expedited examiner even should or could determine identity or
confusing similarity. As the URSP has been characterized by its
proponents as a virtually automated process in which no subjective
analysis is required we do not see how any such process can ever be
applied to a “confusingly similar” standard where a subjective
assessment must be made of the likelihood of consumer confusion; in
fact, even an “identical” test will often require extensive analysis of
the website associated with a domain name to determine whether it
harbors content that infringes on a trademark given its associated
geographic and relevant marketplace limitations. In other words, a
truly automated suspension process would be limited to an extremely
narrow range of domains where blatant infringement can be immediately
recognized from the domain name and website content — yet the pricing
scheme proposed by the IRT, which contemplates simultaneous challenges
involving 200 domains or more, demonstrates that it  is viewed by
trademark interests as a double barrel shotgun and not a sniper’s rifle.

Other registrant concerns regarding the URSP include:

•    The lack of adequate sanctions against abusive complaints. A
one-year suspension from having recourse to the URSP, triggered only
after three separate incidents of abuse, lacks effective teeth to deter
bad conduct. At a minimum, abusive complainants should be required to
compensate registrants for monetary costs and losses associated with an
abusive complaint; and punitive damages should be levied against repeat
offenders. Further, whatever the number of abuses required to trigger
substantial sanctions, they should be counted against the parent
company and all subsidiaries and affiliates of a given corporate entity
lest such a company spread abusive filings among its constituent
entities to exploit a potential loophole. In addition, any attorney
that files more than a de minimus number of abusive complaints in a set
period should be barred from bringing any further URSP actions for a
minimum of three years and should be permanently banned from ever
serving as a URSP examiner.

•    Inadequate time for registrant responses – 14 days is
insufficient to prepare an adequate defense, especially when faced with
multiple simultaneous complaints.

•    The great expense, or outright absence, of an appeals process
according substantive review to registrants who believe that their
domains, and the associated income, have been unfairly suspended. This
is another area in which the URSP is completely unbalanced – a
trademark complainant who fails in a bid to have a domain suspended can
simply move on to the UDRP, another administrative procedure. But a
losing registrant in a URSP challenge has no administrative appeal
option, as there is no “reverse UDRP’ and the appeal to the examiner’s
ombudsman is not a true substantive appeal but only goes to the  narrow
question of whether the examiner’s decision was an abuse of discretion
and/or process (and, honestly, how often is an ombudsman going to make
such a determination of abuse?). This leaves the registrant with the
sole option of an expensive and extremely lengthy judicial appeal, if
he resides in a jurisdiction with a national law similar to the U.S.
Anticybersquatting Consumer Protection Act (ACPA).

Again, we must reiterate that adoption of the URSP would constitute a
major new policy initiative for ICANN. It would implement the seriously
mistaken policy of having non-uniform dispute procedures at incumbent
versus new gTLDs, with the dispute resolution policy for new gTLDs
being markedly slanted in favor of trademark interests and against
registrants. Such profound policy decisions can only be undertaken
through a PDP conducted through the GNSO – any attempt to impose it
absent such a PDP would be at complete variance with ICANN’s internal
rules and would greatly undermine confidence in ICANN’s private sector
model by many segments of its participating community, as well as by
nations and multinational organizations that are closely monitoring
ICANN’s activities.

Additional IRT Views

While the URSP is the principal focus of our concerns arising from the
IRT Report we do have additional comments regarding some of its other
provisions:

•    We share the concerns voiced by many other parties that the
proposed Global Protected Marks List (GPML) may prove difficult or
impossible to implement, would likely expand dramatically in scope over
time, and lacks adequate foundation in existing trademark law. The
establishment of a preemptive, global “famous marks” list would place
ICANN in the improper role of an international treaty
organization/multinational legislature.

•    We believe that the proposed Standard Sunrise Registration
Process has merit as a means of avoiding unnecessary duplication of
effort as new gTLDs are introduced and trademark owners are given
initial opportunity to secure their marks as domains at new registries.

•    We also believe that the IP Clearinghouse may have merit
insofar as it would create a standardized global database of protected
marks for the mutual benefit of rights owners and registrants. However,
in our view such a database must be restricted solely to registered
trademarks and exclude unregistered marks, geographic names, family
names, etc.; must include reliable information regarding the relevant
marketplace and geographic scope of a given trademark; and should not
in any way be utilized in conjunction with the URSP or GPML, both of
which we oppose. We also object to any requirement that a registrant
who learns that a domain name they are seeking to register matches a
mark contained within the IP Clearinghouse be required to make various
representations and warrants as a pre-condition of such registration as
unnecessary. A registrant in receipt of such information will be well
aware that the domain may be the subject of a subsequent challenge and
that a legitimate interest, good faith use, and correct WHOIS
information will take on heightened importance in that context. Given
that every generic dictionary word is the subject of one or more
trademark registrations, and that the total number of global trademarks
is staggering (in the U.S. alone there were more than 1.3 million
active certificates of trademark registration in 2008) it is unduly
burdensome and extremely prejudicial to place an affirmative duty upon
all registrants seeking to acquire a domain that matches a
Clearinghouse mark but which is intended to be utilized in a completely
non-infringing manner. It is also wholly unnecessary, as all
registrants are put on notice that their domains are subject to UDRP
challenge, and agree to abide by it, when they contract with a
registrar to register and renew their domains.

•    Finally, we would urge ICANN to reconsider its entire approach
to trademark protection on the DNS.  We have just read an excellent
research paper by American University/Washington College of Law
Professor Christine Haight Farley, entitled “Congruence and
Incongruence: Trademark law and ICANN’s Introduction of New Generic
Top-level Domains” (available at http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1400304).
Professor Farley observes that “because the new gTLD policy imports
certain concepts from trademark law in an effort to address
architecture issues, this policy would result in long-term problems
both for domain names and for trademark law jurisprudence”. She goes on
to observe that two of the principal underpinnings of trademark law –
territoriality and consumer confusion – have little relevance to a
global DNS serving a culturally and educationally diverse user
population. She then opines that “changes in policy such as this one
may create a slippery slope where a technical organization like ICANN
slides into a more prominent position in Internet governance”.

She concludes her paper with the declaration:

I strongly urge domain name policy makers to consider carefully the
appropriateness of importing trademark law concepts into domain name
policy.
What is at stake here is the risk that fundamental principles of
trademark law will lose their force…my fear is that this policy
wrenches trademark law out of its practice with limitations and
defenses poses a danger to expression for domain names and trademarks.
This risk should be of concern to anyone who cares about trademark
policy.

The ICA cares very much about balanced trademark policy (and we note
that Professor Farley has no doubt that what is being discussed is
major new POLICY). We therefore join her in urging ICANN to proceed
with extreme caution in this area. Our experience teaches that the one
law that is never repealed is the law of unintended consequences.
Trademark owners may well find that a policy sought to gain advantage
over domain registrants results in a diminution of both trademark and
domain name rights in the global DNS. Similarly, while trademark owners
tend to favor maintaining ICANN’s private sector leadership model,
ICANN’s acquiescence with their request to assume powers more properly
associated with treaty organizations or legislatures may well
accelerate the push to replace the “light touch” JPA oversight of the
U.S. with far more intrusive multinational oversight.

Conclusion

We hope that ICANN will find our additional comments useful as it moves
toward preparation of a 3rd version of the DAG. As stated above, the
ICA is strongly opposed to any inclusion of the URSP within the DAG,
even as a supposedly temporary “placeholder”. The proposed URSP is
undoubtedly a major new policy initiative and not a technical
implementation detail, and it is irretrievably slanted in favor of
trademark interests to the substantial detriment of legitimate domain
registrants. The only proper way to proceed is to initiate an expedited
PDP that can result in balanced UDRP reform being put in place across
all gTLDs prior to the launch of new gTLDs in the last quarter of 2010.

Thank you for your consideration of our views in this matter.

Sincerely,
Philip S. Corwin
Counsel, Internet Commerce Association