ICANN's proposals on URS and Trademark Clearinghouse

Thu Oct 22 10:02:38 CEST 2009

Thank you Robin. Here is a link on ICANN’s overarching trademark issues: it
has all the information including Kathy’s and mine White Papers:
https://st.icann.org/new-gtld-overarching-issues/index.cgi?trademark_protect
ion
Off to the airport now.

Best
Konstantinos

On 22/10/2009 02:29, "Robin Gross" <robin at ipjustice.org> wrote:

> 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
> 
> 
>  
> 
> 

-- 
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 

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