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

[Robin Gross]

Thanks so much for sending this update, KK.  I'm so glad that you are  
following and active on this issue.   Should we have a team of people  
in this group who can assist you?   This sounds like an issue we  
should be working closely on in the coming months and have a group of  
people coordinating together.  Please let me know how I can help in  
this group.

Thanks,
Robin


On Apr 14, 2010, at 1:53 AM, Konstantinos Komaitis wrote:

> 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/
>
>




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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