NCUC comments on IRT Report from NCUC IRT Response Team
Robin Gross
robin at IPJUSTICE.ORG
Tue Jul 7 00:19:08 CEST 2009
Dear All:
Below please find NCUC's draft comments on the IRT Report.
Thank you to Konstantinos and Kathy for the lion's share of the work
in drafting these comments!
Please send any feedback and suggestions in the next couple of hours
because we need to file these today. Send any comments directly to
me (and cc Kathy and Konstantinos in case they are still online
then). There is no time for major revisions - only minor tweaks to
improve the existing text.
Thank you,
Robin
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Noncommercial Users Constituency
Submits its
COMMENTS ON PROCEDURAL ASPECTS OF THE IRT FINAL REPORT—
A SUGGESTED ROADMAP FOR MOVING FORWARD
These are the comments of ICANN’S Non-Commercial User Constituency
(NCUC), a group which dates back to ICANN’s founding and has actively
and fully participated in all policy-making proceedings at ICANN
involving domain names and domain name disputes.
NCUC has 102 members in 40 different countries, including 37
individuals and 65 organizations as members. We represent a wide
array of noncommercial groups, including human rights organizations.
Our members, and those they represent, often risk their lives and
their livelihoods to post information about politics, corruption,
revolution and the pursuit of free and democratic rights by
individuals and organizations. In addition, our members use the
Internet, their domain names and their websites to post free and fair
critiques of large companies, their products, services and practices
to the world for lawful discussion and debate.
Our members, and those we have worked with over the 10 years of
ICANN, are often the target of overbroad trademark claims, abusive
cease and desist letters, invalid UDRP filings and a pattern of
practices to shut down their speech by challenging their right to the
domain names (often well-known, well-linked and well-bookmarked
domain names). To shut down the domain name is to shut down the
speech, the competition and the criticisms. It is an abuse we call
“trademark lawyer abuse,” and in the David v. Goliath battles of
small noncommercial organizations and individuals vs. large
companies, “trademark lawyer abuse” is, unfortunately, rampant. (See
the website www.chillingeffects.org for thousands of examples of such
abuse documented by the public.)
It became very clear in the NCUC/IRT Team meeting in Sydney, that the
issue of “trademark lawyer abuse” had not been addressed by the IRT
Team – and was, rightly, considered a valid and necessary
counterweight to the domain name registrant abuse upon which so much
of the IRT Report is premised. Since the IRT Report was drafted
behind closed doors by a group of trademark attorneys who represent
the world’s largest trademark owners and without any representation
of domain name registrants, it comes as no surprise that the report
is one-sided and unbalanced in its treatment of issues.
We renew our claims that the IRT process was imbalanced and unfair,
and repeat our concerns below. At the same time, we recognize that
even the worst processes sometimes move forward. Should the IRT
process continue to move forward, the NCUC has strong recommendations
to ensure that a similar imbalance of views, experiences and concerns
does not continue to the next level of use of these materials.
I. Formation of the Implementation Recommendation Team (IRT) took
place in a non-inclusive and unrepresentative manner.
The first official document informing the GNSO community of the
formation of the IRT was in the form of an email, sent by the
Intellectual Property Constituency on March 11, 2009. It provided a
mere 36 hours for groups to express interest in adding members to the
IPC-formed IRT committee. Timely responses by the ALAC to add well-
known attorney Bret Fausett and by the Internet Commerce Association
to add its president were rejected. Clearly, the views of registrants
– be it noncommercial, individual or commercial- were considered
irrelevant.
We note that such a focus on the needs of only one constituency, the
IPC, is undemocratic and against the traditional values of diversity
and multi-stakeholderism within ICANN. Noticeable absent were those
who represent human rights coalitions, free speech and freedom of
expression organizations and privacy groups. Also not invited to
participate were representatives of domain name registrants – those
who will actually be impacted by these new rules. These
organizations and individuals would have brought to the table
valuable – critical – information about the balance of trademark law
and its limits as regards fair use, free speech and freedom of
expression.
A. The IRT Team Attempts to Rewrite GNSO Developed Policy
When the Intellectual Property Rights Constituency did not get
everything it wanted in the GNSO policy development process it
created the IRT to re-open and re-negotiate the issue to its liking.
The GNSO carefully considered the issue of protecting trademark
rights in new top-level domains and included GNSO negotiated
solutions in its final recommendations. In particular, the GNSO
Working Group “Protecting the Rights of Others” Working Group was
tasked with this objective of protecting trademarks <http://
forum.icann.org/lists/gnso-pro-wg/>. This working group was not able
to come to agreement and support the proposals of the Intellectual
Property Constituency that are now re-opened by the IRT Team. Re-
opening these issues and throwing out the negotiated consensus that
was reached between all stakeholders undermines ICANN’s claim of
“bottom-up” policy-making that involves all stakeholders equally.
B. The IRT Team Operated without Transparency
Contrary to the practices on which ICANN committees are based, the
IRT Team provided no information about its meetings, and no
proceedings of the development of its work. This ‘Masonic’ approach
is worrying, puts a big question mark to the way substantive policy
issues have been approached, and sets a precedent for a one-sided
approach to policy which ICANN should not follow going forward.
C. ICANN Provided Travel Support and Expenditures for the World’s
Largest
Companies and IPC-Members
It is the tradition of the GNSO that individual constituencies pay
the cost of their representatives to participate in the ICANN
process. At great cost and difficulty, the NCUC has sent its members
to participate for years. We continue to raise an objection to
ICANN’s singling out support for a single constituency in the GNSO in
the negotiation of this issue, a constituency comprising the world’s
largest and wealthiest companies Asking Internet users to foot the
bill for the creation and sale of this one-sided policy proposal
which benefits a single interest (large brand owners) to the
detriment of all others simply isn’t fair.
Rather than an IRT Presentation in NYC, London and Hong Kong, the
public forum should provide a balanced presentation of “pro and con”
views of the IRT Report – with attorneys experienced in trademark
law, and its limits – with support from ICANN.
II. There is no need to go forward with the IRT Report.
The IRT Report has been roundly rejected by large segments of the
ICANN community, including NCUC, ALAC, and a significant number of
members of the Business and Registrar Constituencies. Even a member
of the IPC rose at the Sydeny Public Forum to exclaim that trademark
infringement is not “one of the four horsemen of the
Apocalypse” (!). Further, GAC members, including those of France and
Brazil are questioning the IRT Report findings, and the IRT Team
composition and process.
Notably, in all 3 straw polls taken by Bruce Tonkin during the Sydney
IRT Report consultation, the stated consensus from the community was
against the proposals. The overwhelming number of comments during
the Public Forum in Sydney raised objections and concerns to the IRT
Report, and many more commentators were not able to take the floor to
raise their objections because time had been called before they could
reach the microphone. The overwhelming number of public comments
submitted thus far in the public comment period weigh against this
one-sided proposal. If the general public and non-commercial users
are to have any say in policy development at ICANN, the IRT Report
should be rejected since it has failed to provide a solution
acceptable to the majority of Internet users.
The IRT Report need not go forward. It can stop here. Clearly, the
IRT Team did not fulfil its mandate – to provide to the ICANN Board
and the ICANN Committee a report that is reasonable, balanced and
fair. To that end, the ICANN Board is free to thank the group for
its work and continue forward with the rollout of new gTLDs.
III. Should the IRT/IPC process go forward, ICANN needs to ensure
that the mistakes are corrected – the IRT process needs balance and
equity among those who review the comments, and incorporate future
changes into proposals.
The UDRP process of 10 years ago gives us a baseline and a
precedent. At the Santiago meeting in 1999, instead of adoption of
the UDRP, it was clear that deep divisions continued over the UDRP
recommendations and procedures. Esther Dyson, then Chairman of the
ICANN Board, created a diverse committee tasked with creating fair
and balanced UDRP wording. The task was difficult, but the group was
diverse with now well-known representatives of the NCUC, IPC and
Registrars Constituencies. The result included the then-new UDRP
Section 4(c), rights of registrants, for much greater balance,
fairness and equity.
For the sake of new gTLDs and the ICANN process, should the IRT
process move forward, ICANN should:
A. Make the public consultations a debate or at least a
briefing by two sides, not one.
The IRT report, and its now well-known pitfalls, should be fairly and
openly presented to those gathered in the Public Consultations
meetings. This presentation should be by both IRT Committee members
and those representing views excluded from the IRT Report.
Attorneys for domain name registrants should be given the floor,
prior to the opening of the public comment period, to present
PowerPoint slides and widely-agreed upon points of concern and
dissent with the report.
ICANN should, of course, provide travel support to both sides in the
interest of fairness and fair presentation.
B. Create a “Comments-Review Team” with attorneys from
registrant groups only, or both registrant and trademark groups
As the UDRP process showed, we can only move forward if the reviewing
group is fair and balanced. Given the IRT Committee’s history of
rejecting any comments to the IRT Draft Report with which it did not
agree (see IRT Final Report), it is incumbent on ICANN to bring into
the process those registrant attorneys with years of experience in
dealing with “trademark lawyer abuse.” We cannot allow any new
processes to be gamed, misused and abused by trademark attorneys –
and the opportunity for such misuse is clear within many of the
proposals now within the IRT Report. The best way to limit abuse –
by both sides—is to have both sides represented in the discussion.
IV. Implementation of the IRT recommendation falls outside ICANN’s
technical mandate and scope.
ICANN was originally created as a technical entity responsible for
the day-to-day management of the DNS. The IRT Report does not fall
within day-to-day management activities; instead, it is nothing but
clear policy-making, which may produce future regulatory
repercussions. We would like to draw the attention to Esther Dyson –
first chairwoman of the ICANN Board – who stated:
“The White Paper articulates no Internet Governance role for ICANN,
and the Initial Board shares that (negative) view.
Therefore, ICANN does not ‘aspire to address’ any Internet Governance
issues;
in effect, it governs the plumbing, not the people [emphasis added].
It has a very limited mandate to administer certain (largely technical)
aspects of the Internet infrastructure in general and
the Domain Name System in particular.”
The IRT recommendations contradict this structural restraint. It
seeks to exercise some form of Internet “Regulatory Governance” by
governing certain aspects of individual behaviour on the Internet.
NCUC does not oppose trademark rights or their legitimate
protection. We oppose the re-tasking of ICANN to expand trademark
rights in ways trademark law itself does not support. Trademark
rights are governed by laws, treaties, legislatures, parliaments and
other democratic bodies that are appropriately authorized to protect
those rights; they evolve incrementally, through judicial reasoning.
ICANN should not set the precedent of inviting the introduction of
new governance policies that cannot be obtained through legitimate
means of existing legal regimes.
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These NCUC Comments on Procedural Aspects of the IRT Final Report are
complemented by a set of NCUC Comments on Substantive Aspects of the
IRT Final Report, separately submitted in this proceeding.
________________________________________________________________________
________________________
Noncommercial Users Constituency
Submits its
COMMENTS ON SUBSTANTIVE RECOMMENDATIONS
IN THE IRT FINAL REPORT—
A CALL FOR RIGHTS OF REGISTRANTS TO BE PROTECTED,
FOR “TRADEMARK LAWYER ABUSE” TO BE RECOGNIZED,
AND FOR IRT/IPC/TRADEMARK PROTECTION PROPOSALS TO
FALL WITHIN THE SCOPE AND MISSION OF ICANN.
These are the comments of ICANN’S Non-Commercial User Constituency
(NCUC), a group which dates back to ICANN’s founding and has actively
and fully participated in all policy-making proceedings at ICANN
involving domain names and domain name disputes before now.
I. A Few Opening Thoughts
Sydney IRT and Public Consultations
ICANN has now heard loudly and clearly from the ICANN community.
Throughout the microphones of the Sydney meetings, in forums loud and
small, the opinions echoed: the IRT Report is not reasonable, is not
balanced, is not fair and is not just. In short, the IRT Report is
not a workable solution.
In the Sydney IRT Consultation, the ceiling rang with a significant
number of heartfelt and deeply founded, concerns of noncommercial
registrants, individual registrants, commercial registrants,
registrars and those speaking for Internet users. Comment after
comment from NCUC, ALAC, Registrars and even IP attorneys speaking in
opposition to the IRT were heard (with many more deep concerns
expressed in the hallways).
All 3 straw polls, conducted by Bruce Tonkin, on the major pillars of
the IRT Report in a main IRT presentation (Wed. afternoon) showed
that not a single major pillar of the report had the support of even
a bare majority of the community in the room. In all 3 polls, there
were more hands raised in opposition to the ITR Report proposals than
in favor.
To the extent that the IRT Team was called upon to create something
reasonable and balanced, it has not done so. Its work should
conclude without aftermath. To the extent that its work continues in
some form, then this work must be done in a manner reflecting the
diversity of the GNSO and ICANN, and with an expertise and concern
for the abuse of domain name registrants as well as the policing of
trademarks. Such a new group must fairly and in a balanced manner
represent all constituencies in the GNSO and operate in the
traditional ICANN open and transparent manner. (Please see the NCUC
Procedural Comments on the IRT Final Report, separately submitted.)
Our Goals
These Substantive Comments are devoted to NCUC’s severe, substantive,
legal and judicial concerns with the proposals of the IRT Report. We
will share how the substantive IRT recommendations take ICANN far
afield of its technical scope and mission, create substantive new
trademark rights (beyond existing law), gut existing safeguards and
fair procedures for domain name registrants in the Uniform Dispute
Resolution Policy (“UDRP”), and create an unbounded situation for
abuse by trademark lawyers and those representing trademark owners.
We address our significant concerns with all major aspects of the IRT
Report below.
Two Opening Observations
A. Domain name registrants are not bad. To read the
characterizations of the IRT Report, and the comments of the
committee, domain name registrants are inherently bad. We are all
guilty until proven innocent. We merit no fair or actual notice of
trademark infringement allegations. We are not entitled to just or
fair time to respond. Following legal due process safeguards is just
too expensive and time consuming for brand owners.
In fact, as so many pointed out in Sydney, domain name registrants
are Internet users. We are amazingly diverse, large and small, in
developing countries and developed ones. We are noncommercial
organizations, commercial companies small and large, individuals –
registrants include my parents and your children, everyone’s civic
organizations and parenting groups, our Scouting associations and
other recreation and hobbies, and human rights groups around the
world. We want domain names in our languages and scripts. We have
tens of millions of ideas to share, products and services to market
and discuss, and political ideas to convey – and we register domain
names to do so.
Domain name registrants (Internet users) pay 100% for ICANN’s
operation. It is our billions of domain name registration fees which
pay the registrars and the registries, who in turn, fund ICANN.
Domain name registrants everywhere are the broad base of the pyramid
atop which ICANN rests.
NCUC, along with so many others in Sydney, proclaimed the right of
all domain name registrants to be treated with fairness and equity,
justice and process. We are entitled to respect in the ICANN
relationship and fundamental fairness before a mere allegation of
trademark infringement results in the loss or suspension of our
domain name registration and the underlying speech (noncommercial/
commercial) it conveys.
B. Cybersquatting has not been proven to be on the rise. Throughout
the IRT Report and Sydney, it was proclaimed that cybersquatting is
on the rise because WIPO UDRP filings were up by 7% in 2009. But on
investigation, confrontation with facts, and tough questioning from
the floor, it was shown that the facts don’t correspond to the
conclusion.
In 2008, domain name registrations were up by 16 percent. Yet, WIPO
UDRP filings were up by only 7% -- a percentage-wise reduction
overall in WIPO UDRP filings. A number of legitimate reasons were put
forward in Sydney for the slight rise of WIPO UDRP filings (about 200
in 2008), including:
1. Forum shopping – trademark complainants are choosing WIPO because
its decisions favor trademark owners;
2. Expansion of UDRP scope – trademark complainants are choosing WIPO
because its panelists are allowing not policing the traditional
boundaries of the UDRP as closely as other forums;
3. A huge number of new domain name registrations!
In anything, the many decisions in favor of Respondents (Registrants)
in the 2008 WIPO UDRP decisions show that the UDRP system works – it
saves important domain names and the speech and communication for
which they are used.
II. Detailed Commentary on the Substantive Issues of the IRT Final
Report and its Proposals
“The IRT recommendation should not usurp or replace
the existence of legal institutions and systems
that are intended to establish the scope of legal rights
(e.g., existing laws and national courts).
IRT Final Report, p. 12.
The recommendation should protect the existing rights of trademark
owners,
but neither expand those rights nor create additional legal rights.
IRT Final Report, p. 11.
1. Globally Protected Marks List
Summary: The Globally Protected Marks List (“GPML”) is an
exceptionally weak part of the IRT Report. It is not grounded in law
or practice. It creates rights to a string of letters, unbounded by
goods, services, or use, in a way far beyond trademark law. The
proposal would limit the right of individuals, noncommercial
organizations and Internet entrepreneurs to use basic dictionary
words in the manner to which they have always been entitled by law,
by fair use and by rights of all to language.
Analysis and Comment
A. The Globally Protected Marks List – the GPML database- is a matter
well beyond ICANN's scope and its core competence. In fact, the
determination of famous marks is a matter of great dispute among
trademark lawyers and scholars, and one that takes considerable time
for courts.
B. The GPML is a list far larger than even famous international
brands. The GPML, as drafted, may well include hundreds of esoteric
scientific and technical terms which, while in international use, may
be completely unknown, unrecognized and unused outside their limited
technical areas. To grant such words elevated status in all new
gTLDs, at top and second levels, defies reason and goes far afield of
existing trademark rights.
C. The scope of the GPML protection defies the limits of trademark
law. The IRT Team proposes that GPML marks will be blocked for
registration in all new gTLDs – even those intended for noncommercial
use, criticism or journalism, and for the myriad of other ways in
which law allows even famous trademarks to be used by others under
principles of free speech and freedom of expression, fair use and
noncommercial use. The IRT Team ignores the simple fact that
trademark rights do not regulate noncommercial speech and it attempts
to apply commercial rules to all noncommercial speech.
D. The GPML pushes ICANN, a technical body, into the cutting edge of
the most difficult trademark law evaluations. Even national courts
are wrestling with these issues – with many different results. A
Spanish court protected a local “NIKE” brand owner, over the
internationally known brand; the Canadian Supreme Court found that
even famous marks are not necessarily entitled to absolute or
extensive protection -- even over other commercial marks. (See,
e.g., Canadian Supreme Court, Mattel, Inc. v 3894207 Canada, Inc.
2006 SCC 22; Veuve Cliquot Ponsardin v. Boutiques Cliquot Ltee, 2006
SCC 23.) This is not the work of ICANN.
E. The GPML extends the protection of trademark words into
noncommercial or fair use – far beyond where trademark law allows
such protection to go. Such overbroad trademark restrictions will
inevitably stifle the free flow of information and chill freedom of
expression on the Internet. It will also have a detrimental effect
upon innovation and use of domain names by entrepreneurs and
individual users.
F. The GPML extends protection of trademarked words into completely
unrelated lines of goods or services, which traditionally remain
protected for use by others, even under trademark law (e.g., the use
of one’s last name in a professional capacity and as a company name,
such as McDonalds, C.P.A. or McDonalds Accounting).
G. The GPML standard, as applied to top level domains, contradicts
trademark law itself. The implications of a “confusingly similar”
analysis boggle the mind. A “goggle” GPML listing might be used to
block a future “Google” gTLD application; a “lego” GPML listing might
block a future “logo” gTLD application (a children’s programming
language created by MIT in the 1960s).
H. The NCUC, as final drafter of the UDRP notes that the IRT Report
uses UDRP Paragraph 4(c) in a manner which it was never drafted nor
intended—and in a way completely outside the bounds of law and
language. UDRP Paragraph 4(c), rights of registrants, was drafted as
a defense to cybersquatting. It was never intended to incorporate
all rights of a new registrant to a domain name – nor to require
registrants to justify their right to use ordinary words or common
names. We may name our children any name we like, without regard to
“existing rights;” we may pick the names of our new products without
any right to the terms we choose (other than avoiding clear
confusion). Benjamin Franklin named his almanac “Poor Richard’s
Almanac” without any existing right or interest in “Richard.” The
IRT Report turns this notion of rights on its head and shifts the
burden of proof onto the registrant.
NCUC supports the right of all Internet users, now and in the future,
to use all words – the basic building blocks of language- in any
manner not proscribed by law and without any need to prove some
existential right. Apple Computer, Inc. did not have to provide such
a right, Google did not have to prove a right – neither must those
individuals, noncommercial organizations and entrepreneurs who follow.
I. The attempt to create the GPML has already revealed numerous
substantial challenges, opposition, lack of definition and complete
lack of agreement. The GMPL’s development, should it be allowed to
go forward, will delay, rather than speed, the implementation of new
gTLDs.
Overall, we recognize the problem the IRT/IPC Team is grappling
with. At some future point, when legitimate criteria are in place or
any legitimate body has come to a determination as to which marks
should be entitled global protection, ICANN should consider
appropriate ways to incorporate the list into registration
practices. Until then, the creation of such a list by ICANN is
completely outside the scope and mission of the organization, as well
as outside its expertise. To do so will delay the process of gTLDs
forever.
2. Uniform Rapid Suspension System Policy (URSP)
Summary: For those who have participated so long and so well in the
GNSO process, the supplanting of the UDRP by the URSP comes as a
complete surprise. To the extent that the UDRP needs reform, then
let’s sit down and evaluate it together with the entire GNSO and
ICANN community.
As drafted, the proposed USRP supplants the UDRP with its broad
access by nearly every trademark owner to the USRP instead of the
UDRP. The URSP, further, guts the UDRP’s protection of domain name
registrants by removing reasonable notice provisions and the basic
time necessary to prepare a response by registrants. It further
opens the domain name dispute policy to gaming, bad acts and abuse by
trademark attorneys.
Should the IRT/IPC Team have a much narrower set of particularly
egregious bad acts it would like to share for discussion, the NCUC is
willing to listen and discuss those truly bad acts.
Analysis and Comment
A. Criticism of and opposition to the URSP was nearly universal in
Sydney. Noncommercial users, individuals, commercial users and their
representatives rose to speak separately and together against the
URSP as a proposed system that provides rights for only one side –
the trademark owner – and virtually no rights for domain name
registrants.
B. In its Joint Statement on the IRT Report from members of ALAC and
NCUC, the two groups jointly presented the following severe critique
of the URSP:
“We have serious issues with the Uniform Rapid Suspension Service
(URS) as proposed. For instance, the URS mechanism subverts
conventional UDRP practice as it gives entirely insufficient time for
notice to the registrant of the pending dispute. Thus, the
registrant is unfairly limited in his/her right of response and the
process is missing the fundamental principle of due process.”
C. After 10 years in operation, we all have concerns with the UDRP
and aspects we would seek to change. If the IRT/IPC has problems
with the UDRP, then let’s investigate them together. To start the
discussion, the NCUC would like to know:
1. When was it decided that the UDRP is insufficient to deal with
cybersquatting?
2. Which parts of the UDRP are problematic?
D. Domain name Registrants are entitled to fair notice and a fair
time for response.
a. Registrants need actual notice. NCUC representatives wrote
into the UDRP the broadest method of notice to work towards “actual
notice” – in which the registrant actually knows a proceeding is
taking place against her/his domain name. The URSP has no such goal.
b. Registrants need adequate time to respond. As we discussed in
Sydney, trademark owners have all the opportunity here: as much time
as they choose to prepare a complaint, and an open calendar for
submission. Gaming is invited – with complaints likely to be
submitted in December or August and decisions made before a
vacationing Registrant even knows the complaint was filed.
c. As the URSP provides insufficient notice and time, no
Registrant or Attorney will be able to provide a proper response ---
critical speech will be lost.
E. The URSP operates on the same premise for which the UDRP was
created –- to create a cheap and fast system of resolving trademark
conflicts online.
Ten years ago trademark owners danced in the aisles of the ICANN
meeting because the UDRP was far cheaper and faster than actions in
local courts. We see nothing in the IRT Report to indicate the UDRP
is not working. We see much in our NCUC evaluation of UDRP cases to
illustrate the opposite—that the UDRP actions in favor of registrants
are protecting important noncommercial, individual and commercial
domain name use and speech online.
We further note that UDRP decisions show that trademark owners seek
to use the UDRP to silence criticism, stop competition, control
discussion, and seek access to words and domain names to which they
are not entitled by law. While the UDRP provides some balance for
the potential of abuse on both sides (trademark complainants and
registrants), such balances is completely lacking from the URSP.
F. “The URS is not intended for use in any questionable proceedings,
but only clear cases of trademark abuse.”
The IRT recommendation suggests that the Uniform Suspension System is
necessary to fight cybersquatting. Around 10 years ago, the exact,
same issue justified the creation of the UDRP. "Except in cases
involving ‘abusive registrations’ made with bad faith intent to
profit commercially from others’ trademarks (e.g. cybersquatting and
cyberpiracy) the adopted policy leaves the resolution of disputes to
the courts and calls for registrars not to disturb a registration
until those courts decide. The adopted policy establishes a
streamlined, inexpensive administrative dispute-resolution procedure
intended only for the relatively narrow class of cases of "abusive
registrations". Second Staff Report on Implementation Documents for
the Uniform Dispute Resolution Policy (October 24, 1999), available
at <http:www.icann.org/udrp/udrp-second-staff-report-24oct99.htm
What is really the reason behind the creation of the URSP? What is
on the mind of the IRT Team? Is this the way of the IRT Team to tell
us that ten years of UDRP case law have been unsuccessful? But, the
report itself states that the UDRP has been successful: “The UDRP has
unquestionably been an important and successful mediation tool for
trademark owners and domain name registrants alike”. (IRT Report, p.
25). The justifications behind the URSP are not convincing enough
and seek to address concerns of no substance or reasoning. And some
members of the IPR community are already calling for URSP to apply to
existing domain names and to replace the UDRP.
G. “Trademark Lawyer Abuse” must be taken into account.
Everyday, the NCUC and its members see the flip side of
cybersquatting --- “Trademark Lawyer Abuse.” There are bad acts,
unsubstantiated threats, overbroad claims and misuse of the UDRP
process, cease and desist letter and other methods of threatening
domain names. See the website www.chillingeffects.org for thousands
of examples of such abuses documented by Internet users. Often
trademark lawyers use the UDRP to manipulate the system, take
advantage of their Goliath v. David position. They seek to use the
UDRP to remove domain names for reasons that have nothing to do with
cybersquatting – but instead to remove competition, to take down
criticism, or merely to expand a DN portfolio.
The URSP proposals fails to take into account the bad faith, gaming,
misuse, misinterpretation and abuse of trademark lawyers. Until the
proposals are balanced to include concerns from both sides, they
cannot be considered for implementation.
H. An Invitation for Future Discussion
The NCUC issues the following invitation: if there are extraordinary
cases of domain name registration abuse which merit consideration for
immediate revocation, we urge the IRT Team to bring them forward. We
are willing to consider the possibility of extraordinarily and
egregious cases, and appropriate action to address such legitimate
concerns. Such circumstances exist in other settings, and might
possibly exist here.
But the scope of the net the URSP catches cannot include legitimate
domain name registrants, good actors – it cannot result in the loss
of legitimate domain names and the critical speech and free flow of
information for which they are used.
3. Post-Delegation Dispute Mechanism as Revised by the IRT
NCUC argues that the IRT Team’s foray into this area fall far outside
the scope of the IRT Team’s mandate, which is limited to only
commenting on issues of trademark law. The IRT Team’s
recommendations about ICANN’s contractual clauses with Registries/
Registrars should not be considered.
4. WHOIS
In proposing a thick Whois for all new gTLDs, the IRT Team does not
provide any explanation as to why such a massive amount of data
should be allocated to only one registry for new gTLDs.
Like trademark law, privacy law is territorial in nature. Different
countries have different laws, and many countries protect the
personal data of their citizens. Some countries, including the
United States, protect the right of anonymous political speech as a
democratic principle. Registrars are more likely to know the privacy
and data protection laws which protect their registrants, and the
practices of their regions.
As NCUC and ALAC together presented in their Joint Statement on the
IRT Report:
We are opposed to the IRT proposal´s policy recommendation to move to
a Thick Whois without doing a privacy analysis, nor taking into
account national laws nor International Privacy Standards, such as
1980 OECD Guidelines, the Privacy Convention 108 and the EU Data
Protection Directive.
5. IP Clearinghouse
Summary: The IP Clearinghouse takes ICANN far outside its scope and
technical mission. It is an intellectual property rights structure
that has no barrier to creation in the private sector, and is
consistent with the types of private sector services, including
monitoring and alert, now being offered. Further, the creation of
such a superstructure of ICANN, a single monolith, will attract such
lobbying from brand owners that the rollout of new gTLDs may be
further delayed for years!
To the extent that private IP Clearinghouses emerge in the various
regions of the world to support the various languages of the world,
and practices of the various national trademark laws, we agree. Such
private structures, or one supported by national Trademark Offices,
are consistent with the territorial bounds of trademark law, the
diversity of trademark rights and practices and the separate bounds
and limits on trademark rights under national laws.
Analysis and Comment
NCUC understands from its consultations with IRT attorneys and
potential new gTLD applicants that the IP Clearinghouse concept is
designed to prevent redundancy and create efficiencies. It may come
as a surprise that we have no objection to the general concept – we
all support efficiencies, provided they are bounded by the
traditional limits of trademark law and provide the new gTLD
Registries and Registries with the necessary data to make informed
and accurate decisions regarding whether an asserted trademark right
truly falls with the scope of a new gTLD.
NCUC further submits that – in the strongest terms – we contest and
discourage ICANN from creating the proposed IP Clearinghouse as a
single massive monolithic database of ambiguous trademark rights.
For every reason imaginable, including ICANN’s technical mission and
specific areas of technical expertise, such an entry into the
intellectual property rights legal regimes would derail ICANN’s
mission and dramatically change the scope, nature and faces of the
ICANN community. Such an IP Clearinghouse structure could completely
derail ICANN.
In particular, NCUC notes:
A. Brand owners have no consensus on what goes into the database.
Throughout Sydney, we heard that registered marks, and unregistered
marks, national marks and state marks, intent to use and those in
use, and even completely unrelated trademark rights may be entered.
Let the trademark owners create individual, regional IP Clearinghouse
or work with the IP Clearinghouses to develop policies that most
accurately reflect the rights and territorial limitations of
trademark law in their jurisdictions.
B. ICANN has no scope nor authority to create a single, monolithic,
undefined superstructure to adjudicate legal rights. The creation of
such a legal regime falls completely outside the function of ICANN as
set out in the foundational White Paper.
C. Even if ICANN had the authority, which it does not, it should not
want to create a single, monolithic IP Clearinghouse because such a
process will change the nature of the community ICANN serves. The
jockeying for position in the IP Clearinghouse, the hope of extending
its reach to even the dimmest trademark and other intellectual
property right, will lead to a run on ICANN by trademark owners. This
discussion, debate, and jockeying for rules of the IP Clearinghouse
should happen outside the bounds of ICANN.
D. The various national Trademark Offices are in a much better
position to lead these discussions than ICANN. Trademarks are
territorial by nature. They are bounded by the scope of their use,
and by other intricacies of local law, e.g., the law that determines
when a well-known, or even famous mark, has become generic (e.g.,
elevator in American and hoover in English).
It is the national Trademark Offices which can best guide this
discussion. It is the national Trademark Offices which can best work
together on a regional basis to support (or even help run) regional
IP Clearinghouses. Further, virtually all national Trademark Offices
enter their registrations into databases. While only some provide
access to these databases openly to the public online, they could
make access easily available to private IP Clearinghouse in which
they had a hand in creating and/or running and/or overseeing.
Further, the national Trademark Offices are also the most informed
about the limits of trademark law, their national law protections for
freedom of expression and fair use, and can seek to incorporate these
balances and protections of their laws into the scope and framework
of the IP Clearinghouses.
E. Should such regional, private (and/or Trademark Office-informed)
IP Clearinghouses be created, NCUC strongly recommends the clear and
unmitigated addition of information necessary for the new gTLD
Registries and Registrars to operate:
a. the international class(es) of goods and services in which the
goods are registered;
b. the complete and specific description of goods and services
which all trademark applicants must provide as a condition of
submitting a trademark application;
c. the entity granting the trademark registration (e.g., country,
region) .
F. To serve IDNs, the private, regional IP Clearinghouses are in the
best position to meet the needs of trademark owners working in their
own languages and scripts.
G. NCUC agrees that the use of the private IP Clearinghouse should be
optional. Registrars and registries should work with the IP
Clearinghouses appropriate to their languages, regions, scripts and
community.
H. The market has already created IP Clearinghouse-type databases for
the sunrise periods that have passed – the market will inevitably
meet the need for new private, regional IP Clearinghouses, especially
if ICANN makes clear the need for new gTLDs.
Overall, a single, dominant, monolithic and monopolistic IP
Clearinghouse will delay the implementation of new gTLDs for years.
It is outside the scope and technical mission of ICANN. Further, not
all conflicts can be anticipated or foreseen. The tried-and-true
dispute mechanisms of the UDRP process and courts will continue to
provide an avenue to all who feel they have a legitimate case.
------------------------------------------------------------------------
-------------------------------
In conclusion, the NCUC appreciates the opportunity to submit these
Substantive Comments, and its separate Procedural Comments, in this
proceeding. We also appreciated our meeting with members of the IRT
Team.
The reception that we received in that meeting – to our concerns
about Trademark Lawyer Abuse, to our concerns for fairness to Domain
Name Registrants – showed us that, had the IRT Team held equal
numbers of Registrant and Trademark Owner attorneys, our comments
today would have been different and this one-sided report would have
been much more balanced.
Overall, despite its flaws, conceptually the UDRP is still a system
that works – and one which, in light of the anticipated traffic in
the DNS, can stretch its scope to incorporate novel issues of abuse.
Let’s move as the entire GNSO and ICANN community to a substantive
UDRP reform. Together we can improve it fairly– for all parties.
IP JUSTICE
Robin Gross, Executive Director
1192 Haight Street, San Francisco, CA 94117 USA
p: +1-415-553-6261 f: +1-415-462-6451
w: http://www.ipjustice.org e: robin at ipjustice.org
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