The Implementation Recommendation Team (IRT) created by ICANN’s Board to allow its Intellectual Property Constituency to propose “solutions” for whatever trademark threat they believe is posed by new gTLDs has issued its final report (available at http://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf). This proposal is now open to public comment until June 29th. Perhaps in preparation for the upcoming ICANN meeting in Sydney, where the seasons are reversed from the Northern Hemisphere perspective, the IRT has created a trademark owners’ wish list and asked ICANN to play Santa Claus. The ICA will be in Sydney to point out that while Winter may start in Australia on June 21st Christmas is still half a year away — and that Scrooge might be a preferable role model in regard to many of its recommendations
This is not to say that we discount the many concerns being triggered by the new gTLD proposal, as we have quite a number ourselves — or that we are opposed to effective means for trademark owners to safeguard their existing legal rights in the DNS. But the IRT process has been gravely flawed from inception, and many of its recommendations would have ICANN weave new rights out of whole cloth and leave legitimate registrants’ investments at an unfair and permanent disadvantage against future trademark objections.
In regard to the IRT’s procedures, as previously noted we filed a detailed complaint with ICANN Ombudsman Frank Fowlie on April 21st laying out our case that the IRT was an ICANN “constituent body” operating in violation of the Bylaws requirements for fairness and transparency, and that it should therefore be required to come into compliance or be denied further staff and financial support from ICANN. Mr. Fowlie has been polite in his subsequent communications to us but has yet to issue formal findings in response to our allegations, bringing to mind the adage that, “Justice delayed is justice denied.” It’s too late to deprive the IRT of their ICANN support, but it’s not too late for a forthright declaration that they broke the rules when they decided to operate behind closed doors.
As discussed below, the largest concern raised by the Report is the proposed Uniform Rapid Suspension (URS) system, which would largely displace the flawed yet familiar UDRP. The IRT process is best understood as ICANN-sanctioned UDRP reform with complainants in charge and registrants largely excluded. That this is one-sided and inherently unfair process is obvious. Domainers have their own issues with the UDRP, chief among them its growing lack of uniformity and predictability. So by all means let’s undertake UDRP reform, but let’s do so in a balanced and transparent manner with all parties around the table.
While ICA has yet to digest every word and footnote of the 69 page final Report, we plan to do so and to file a comprehensive response by the deadline. Overall, it seems little changed from the interim Report we previously criticized, with the major additions being buttressed justifications for its proposals.
Domainers need to understand that this is a process, not an event, that we are a long way from the finish line and that there is no reason to throw in the towel. What is needed is for concerned parties to weigh in with ICANN by filing strong written comments and, if in the neighborhood, by stopping by and speaking out in Sydney. In addition, ICANN has announced that it will hold public sessions on the overarching issues relating to new gTLDs, particularly trademark protection and the potential for abusive conduct. These sessions will be held in:
• New York City – July 13
• London – July 15
• Hong Kong – between July 20 & 24
• Abu-Dhabi – between August 2 & 6
The trademark community is already gearing up to turn out for these meetings en masse and domainers need to make a similar commitment to participation in this unfolding process.
The proposed URS is probably the greatest threat faced by domain investors since ICANN’s inception. If adopted, it would constitute a substantial erosion of the substantive and procedural protections for domain portfolios. Once put in place it’s likely just a matter of time — and we’re talking a few years, not decades — before it would be instituted for .com and the other incumbent gTLDs.
One major change from the interim report is that a URS complaint would have to allege bad faith registration AND use, whereas the interim report would have only required one OR the other (which would have made it possible to suspend a domain that had never been used!). While this is a sounder approach its ironic effect is to render the 3-part URS standard essentially identical to that of the UDRP, making it crystal clear that it would largely displace it. (There is one substantive difference, a requirement that the domain be identical or confusingly similar to a valid trademark registration in a credible jurisdiction, but few UDRP complaints involve unregistered marks so this is largely a distinction without a difference). The IRT contends that a successful URS complaint “requires a much higher burden of proof” in that its elements must be satisfied by clear and convincing evidence that there is no genuine contestable issue rather than the UDRP standard of preponderance of the evidence. But the line between those standards is hazy and open to argument even among lawyers. More importantly, the URS examiner may be asked to make a determination as to which side of the line a given domain falls on for as little as $1.50 per disputed domain name, which does not pay for a whole lot of considered deliberation. The IRT would counter that most URS complaints will only involve 1 or 2 domains held by a single registrant, bringing the fee per name down to only $100-200 – but those figures are still respectively one-fortieth and one-twentieth the total average cost of bringing a UDRP complaint, so the URS will make it far less expensive for trademark owners and their attorneys to launch complaints totaling many multiples of current UDRP filing levels. And the registrant accused of abuse will have a scant 14 days to prepare a detailed response as to each and every domain implicated by these cluster bomb filings.
The URS would be worrisome enough if it applied solely to domains that were identical to registered trademarks, but as there is no objective standard for what constitutes “confusingly similar” underpaid examiners will be asked to make near-instantaneous determinations regarding domains that may well be many degrees of separation away from the mark in question. Even WIPO conceded, in regard to its similar Expedited Suspension Mechanism (ESM) proposal, that an examiner would be hard pressed to determine a confusingly similar claim in a process that is supposed to be so rapid that it’s nearly automated.
The URS also fails the “Monster test” that we previously articulated, in that it does not provide for effective sanctions against abuse by a trademark owner. Under the IRT proposal such abuse would have to occur on three separate occasions before the transgressor would face any penalty, and that would consist of a mere slap on the wrist in the form of barring further URS filings for a single year – no requirement to reimburse the lost income of the registrant harmed by the improper suspension of his domains, no punitive damages at all, and the abuser still left free to file UDRPs and court actions during their one year time out from URS eligibility. The combination of extremely low filing fees and no effective sanctions is an open invitation to aggressive use and outright abuse, and constitutes the most glaring illustration of this proposal’s one-sided nature.
As for an aggrieved registrant believing his domains to have been improperly suspended, the IRT proposes that, deprived of income, he should seek redress under the UDRP or in court. But there is no “reverse UDRP” that permits a registrant filing for reinstatement of a suspended domain, nor is it clear what national laws would provide potential relief. But wait, the IRT would also allow a request to a URS ombudsman to find that the original decision was arbitrary and capricious or an abuse of discretion. That option depends on the employee of the examination authority finding that an agent of the same entity committed major error or worse. How likely is that?
There are other major provisions of the IRT proposal that concern us, including those for an IP Clearinghouse and a Globally Protected Marks List. While we are still examining their details it appears that their preemptive nature goes well beyond existing trademark protections in statutory law. Granting such new rights would effectively turn ICANN into a legislature for the DNS. It may seem attractive at the moment for trademark owners to urge such action by ICANN, but we predict that they will eventually rue the day that ICANN decides that national laws and international treaties do not define the limits of rights in the DNS but are merely a jumping off point for fashioning new rights.
While the IRT members accorded the ICA a polite and respectful reception during our presentation at their final San Francisco meeting we harbored no illusions that they would retreat from the URS and adopt our suggestion for a broader, fairer, and more inclusive UDRP reform effort. Given the short time the ICANN Board provided for them to develop their “solutions”, and the possibility of erosion as the process moves into the broader ICANN community, it was predictable that they would produce a maximalist wish list.
As the trademark community has opposed new gTLDs from the start, perhaps they were even more Machiavellian in their thinking – deliberately overreaching so that when their package of proposals was rejected in whole or part they would have a stronger basis for blocking the entire project. But this is probably wishful thinking, as we are now seeing press reports that the trademark community is concluding that new gTLDs are inevitable (as well as getting oral feedback that in many instances large corporate marketing divisions are now thinking they may be quite desirable), so they are gearing up for Sydney and the regional sessions to press for full adoption of the IRT recommendations.
Again, these IRT proposals are just recommendations, not final policy rules for new gTLDs. But ICANN is anxious to overcome trademark sector concerns so that it can begin to accept new gTLD applications in the first quarter of 2010. So these IRT proposals must be taken very seriously and addressed on their own demerits. The stakes for domainers are simply too high to do otherwise.