ICANN's proposals on URS and Trademark Clearinghouse

[Kathy Kleiman]

Hi Robin and All,
Let me share the links with you to Konstantinos posting (which I fully 
endorse and support):
1. The main announcement of the new Draft Application Guidebook, now in 
Version 3 (called the DAG), with an overview of key issues and links.
2. The new Uniform Suspension Services report (written by ICANN Staff)- 
http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct09-en.pdf
3. The new Trademark Clearinghouse Report (written by ICANN Staff)- 
http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-tm-clearinghouse-04oct09-en.pdf

We look forward to discussing these documents with those in Seoul and 
those online. Their impact on the Noncommercial Community will be 
enormous (IMHO).
Best,
Kathy

> Thank you, Konstantinos.  This is very helpful starting point for our 
> discussion on how to position ourselves going forward.  You've 
> highlighted some big issues below for us to work through.
>
> Could you please forward White Paper again (or send another link, I'm 
> not able to access the links below)?
>
> Thanks again!
>
> Best,
> Robin
>
> On Oct 21, 2009, at 10:15 AM, Konstantinos Komaitis wrote:
>
>> Dear all,
>>
>> Here are some initial thoughts on ICANN's response to the IRT 
>> proposal, published a little earlier this month. Please bear in mind 
>> that ICANN is requesting GNSO¹s consensus view on the Trademark 
>> Clearinghouse and the Uniform Rapid Suspension System (URS). These 
>> are the views of myself and Kathy Kleiman and a reflection of our 
>> sense of events. NCUC will be meeting at length in Seoul to discuss 
>> the issues and develop our position for moving forward. To see the 
>> new documents, drafted by ICANN staff, please go to 
>> [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-u...] 
>> for Uniform Rapid Suspension Service and 
>> [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-t...] 
>> for Clearinghouse.
>>
>> First, some great news. The Globally Protected Marks List (GMPL) is 
>> completely gone (or so it appears at this stage). The NonCommercial 
>> Users Constituency (NCUC) was against the GPML from the beginning and 
>> in White Paper, Kathy Kleiman and myself submitted to ICANN 
>> (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...), 
>> we further elaborated on the dangers of proceeding with the GPML.
>>
>>
>> The IP Clearinghouse is now re-named Trademark Clearinghouse. I 
>> consider this to be a great development. The term 'IP' encompasses 
>> other rights (patents, copyright, etc) and this is not the role of 
>> the Clearinghouse ¬ nor should it be. The Clearinghouse is just a 
>> repository and ICANN was correct in recommending a new, more 
>> restrictive name, following our White Paper 
>> (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...).
>>
>>
>> The ICANN proposal did not follow NCUC¹s recommendation for regional 
>> clearinghouses. This was an important issue for nations and for IDNs. 
>> One entity cannot know the trademark laws and practices of all 
>> countries; but regional registries will understand the laws and 
>> nuances of trademark practice in the countries of their region. We 
>> expect to see some attention on this issue from GAC members at this 
>> meeting.
>>
>>
>>
>> One clear problem of the Trademark Clearinghouse is its creation of a 
>> new, a very new, right to a global common law mark. A common law 
>> mark, which is trademark protection although there is no 
>> registration, is a very unusual right. It exists largely in common 
>> law countries, such as the UK and US. Very few countries allow 
>> trademark rights absent trademark registration (e.g., though a 
>> national Trademark Office) and even those countries with common law 
>> protection have national trademark registration (which all serious 
>> trademark registrants will use). The new proposal is problematic in 
>> that it allows any name written or expressed on a handkerchief, on a 
>> label, on letterhead to be listed and thus to gain global protection 
>> – absent any proof of national protection. That's a real problem.
>>
>> The URS is a different story. It has gone worse.
>>
>>
>> As always, we have the same question: why create a new system and not 
>> stick to the UDRP and amend it accordingly? The UDRP was designed for 
>> quick, cheap takedown of domain names. The URS is too quick, too 
>> cheap and new proposal fails even to limit cases to the “egregious 
>> cases” of domain name use that the IRT had highlighted.
>>
>> NCUC and the White Paper submitted to ICANN mentioned that the 
>> creation of the URS could address Œserial cybersquatting¹, a proposal 
>> that was not taken into consideration 
>> (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/at...). 
>> So, the system will be open to gaming and abuse. The idea is for the 
>> URS to 'lock' the domain name rather than transfer or cancel it, as 
>> it happens with the UDRP. But, here is a possible outcome of this: 
>> trademark owners will use the cheap and fast URS to 'lock' the domain 
>> name and then proceed to the UDRP (submitting the URS decision as 
>> evidence for bad faith) and get transfer of the domain name.
>>
>> The URS continues to use and justify itself in the dialectic of the 
>> UDRP. The new proposal says that the URS standard is similar to the 
>> UDRP, but the burden of proof is higher – but it is much, much lower.
>>
>> Moreover, there is no mention on the legitimate rights or interests 
>> of domain name holders and the deadlines are too short ¬ 14 days as 
>> opposed to the UDRP¹s 20 days ¬ although there is a possibility for a 
>> seven-day extension. Trademark owners will game the system, file on 
>> Christmas Eve, and a domain name will be lost before the registrant 
>> even knows it is of concern. This should be a huge problem for all 
>> registrants: noncommercial, commercial and individual. It's simply 
>> not fair; it's not due process.
>>
>> Further, the respondent is required to submit a statement on truth 
>> and accuracy of the submissions, while the trademark owners appears 
>> not to be under the same obligation. Why?
>>
>> Also, beware, one error on your response, and you lose. The new URS 
>> proposal also the definition of Œdefault¹ to include non-compliance 
>> with any the filling requirements-- even minor, even by a registrant 
>> representing himself or herself. This is unfair, considering that 
>> mistakes are human and do not necessarily indicate an attempt to 
>> abuse the system. Creating such a rule, under the default definition, 
>> which is already subjected to UDRP misinterpretations, creates a very 
>> bad precedent.
>>
>> Basically, the URS, as revised, preempts, replaces and displaces the 
>> UDRP without any of its balance or fairness. It does not focus on 
>> egregious cases, but all garden variety disputes – and gives the 
>> trademark owners a nearly automatic win.
>>
>> This can't be the way we want to open new gTLDs. And mass freezing of 
>> domain names under the URS can't be the way we can expect registrants 
>> to flock to the new gTLDs registry applicants want to offer.
>> -- 
>> Dr. Konstantinos Komaitis,
>> Lecturer in Law,
>> GigaNet Membership Chair,
>> University of Strathclyde,
>> The Lord Hope Building,
>> 141 St. James Road,
>> Glasgow, G4 0LT,
>> UK
>> tel: +44 (0)141 548 4306
>> email: k.komaitis at strath.ac.uk
>
>
>
>
> 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 
> <mailto:robin at ipjustice.org>
>
>
>

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