ICANN consultation on new gTLD Agreement process and post-delegation dispute resolution process.

[Konstantinos Komaitis]

Dear all,

I would like to give you an update on the ICANN consultation on new gTLD Agreement amendment process and post-delegation dispute resolution process I attended yesterday evening. This meeting was initiated by the Registry Constituency, which is concerned with the PDDRP and its potential impact upon the future of Registries.

A quick reminder: the Post-Delegation dispute resolution process is an additional trademark defense under the new gTLD programme. Under this process, trademark owners will be able to turn against a Registry and seek to prove that the Registry has engaged in a systematic registration of domain names that infringe upon their rights. The remedies are severe and can potentially lead to the cancellation of the contractual relationship between the Registry and ICANN. So, in essence, every Registry is amenable to trademark intimidation and abuse, just like domain name holders are. If this system is finally endorsed trademark owners will have at their disposal the following mechanisms: the UDRP, the newly-established URS and the PDDRP. For me, all these mechanisms demonstrate an awkward resemblance, which demonstrates a clear lack of consideration and the impact that they can potentially have upon the whole registration system. The full text of the policy can be found here: (http://www.icann.org/en/topics/new-gtlds/draft-trademark-pddrp-redline-15feb10-en.pdf)

One of the things that was heavily discussed was the involvement and role of ICANN within this process. ICANN seeks to waive any sort of responsibility and abstain from actively being involved in the process, something that of course Registries do not agree with. Registries want ICANN to be part and take full responsibility of the decisions reached under the PDDRP, because of the contractual agreement that it holds with Registries. Amy Stathos claimed that the PDDRP is not part of the contractual agreement that Registries hold with ICANN and therefore there is no justification for ICANN's involvement in the process. But here is the catch - under the PDDRP ICANN will be responsible for determining the remedies should a PDDRP panel find that the Registry has been involved in systematic registrations that infringe trademark rights. So on the one hand ICANN does not want to be involved in the process so as to avoid any sort of liability issues, but on the other hand they are fully involved.

Kathy Kleiman expressed concerns over the justification of such a system and the way it has been promoted, while Jeff Neuman said that this policy raises serious legal issues, such as privity of contract, that have not been clearly taken under consideration and will create much more problems than the ones they seek to address. There was a great fear by most of the participants that, just like the UDRP, the PDDRP will be abused by trademark owners with Registries having no other option but to suspend and cancel domain names in an effort to avoid being engaged in the PDDRP. Chuck Gomes made the very accurate comment that in any case we need to think that the registration system is not only aimed to please big brand owners and that there are so many other participants, like individual users and small trademark owners, that we tend to forget.

The Registries' position is also that monetary damages are not appropriate for this system and that a de novo review should be in place that will allow the losing party to challenge the PDDRP decision. There was a lot of discussion on the de novo review issue - many analogies were drawn with the UDRP and the way de novo review is working, many of which were mistaken on the fact that they considered the UDRP an arbitration process, which is not (there is US case having established this: Dan Parisi v. Netlearing Inc.). Moreover, Registries asked for the incorporation of safe harbours within the PDDRP (like in the UDRP) and for some kind of monitoring of the complaints (the complaint should have a close nexus with the alleged infringed rights - e.g. Nike cannot ask the cancellation of domain names relating to Adidas). Finally, Registries also asked for a 3-member panel rule, instead of a single panel. The National Arbitration Forum, which was participating in this dispute, agreed with most of the Registries' comments and said that under its current design the PDDRP is open to abuse.

I spoke about all these issues in line with the comments we made during the public period (http://forum.icann.org/lists/ppdrp-15feb10/). I expressed the great fear that this process, unless very carefully designed and justified, will upset the registration culture and will create a very unfriendly environment for individual registrants. In essence what this policy does is asking Registries to become content-controllers, a task that they don't want nor should they be allowed to  perform. I expressed my fear that we are designing a DNS and the new gTLD programme that is tilted toward protecting trademark interests, forgetting that it is mainly individual users and registrants that are mainly supporting the DNS. I also expressed our great concern over the way WIPO has handled UDRP disputes and the way it is expected it will handle PDDRP ones (something that as you can understand did not go down well with WIPO, which was participating in the call). On the three member panel issue, I said that this rule must be implemented because we are talking about the potential cancellation of a whole Registry, something that will have a roll-on effect upon individual and non-commercial domain name registrants.

I had to cut the call short by 30 minutes because it was getting too late and unfortunately I do not have anything to report on the issue of Registry amendment process. However, the meeting was recorded and it will be made available.

KK

Dr. Konstantinos Komaitis,
Law Lecturer,
University of Strathclyde,
The Law School,
The Lord Hope Building,
141 St. James Road,
Glasgow, G4 0LT
UK
tel: +44 (0)141 548 4306
http://www.routledgemedia.com/books/The-Current-State-of-Domain-Name-Regulation-isbn9780415477765
Selected publications: http://hq.ssrn.com/submissions/MyPapers.cfm?partid=501038
Website: http://domainnamelaw.ning.com/


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