FW: The U.S. "Scorecard" for Brussels Proposes Draconian Trademark Rules - And May Mean the End of Unlimited New gTLDs and/or the ICANN Experiment in Private Sector-Led Internet Governance

[Milton L Mueller]

This is a really excellent analysis of the situation regarding the GAC-ICANN showdown coming up. Please read it and let's discuss how to mobilize.

From: Phil Corwin
Sent: Tuesday, February 01, 2011 8:59 PM
To: Milton L Mueller
Subject: FW: The U.S. "Scorecard" for Brussels Proposes Draconian Trademark Rules - And May Mean the End of Unlimited New gTLDs and/or the ICANN Experiment in Private Sector-Led Internet Governance


FYI--



http://www.internetcommerce.org/The_Scorecard_for_Brussels




The U.S. "Scorecard" for Brussels Proposes Draconian Trademark Rules - And May Mean the End of Unlimited New gTLDs and/or the ICANN Experiment in Private Sector-Led Internet Governance

On Friday, January 28th the U.S. Department of Commerce (DOC) circulated its submission to ICANN's Governmental Advisory Committee (GAC) containing suggestions for what positions the GAC should push for at its February 28 - March 1 meeting with ICANN's Board to air disagreements over provisions of the Proposed Final Applicant Guidebook (AG) for new gTLDs. While it remains to be seen how much support these proposed positions will garner within the GAC, the U.S. is a powerful influence. And, regardless of the overall GAC consensus, it is the U.S. government from which ICANN must obtain a renewal of the IANA root server operations contract by September of this year.

The upcoming Brussels consultation is not the formal forum invoked to resolve Board-GAC disagreements with finality. That second and final consultation has now been set for Thursday, March 17th in San Francisco -- one day before the ICANN Board meeting that will close out the first ICANN meeting of 2011.

The U.S. proposals would establish "rights protections" measures that convert the new Uniform Rapid Suspension (URS) mechanism into a complete substitute for the UDRP and establish a "loser pays" regime that would place individual and small businesses at a great disadvantage. They would also effectively convert ICANN from an organization with private sector leadership to one in which governments had the final say on all policy decisions.

While the U.S. exercised sole oversight over ICANN when the process for developing new gTLD rules commenced four years ago, that oversight role was transferred to the GAC when the Joint Project Agreement (JPA) was terminated, and the Affirmation of Commitments (AOC) entered into, in September 2009. So the coming consultation in Brussels is not just a showdown between the GAC and ICANN Board over new gTLDs but the first real test of their new relationship. If ICANN's Board were to acquiesce to the positions advanced by DOC it would not only mark the end of a new gTLD program that envisions an unlimited number of applications and approvals, but the practical end of ICANN as a private sector-led entity in which policy is developed through a bottom-up consensus process. While ICA and others have sometimes criticized ICANN's fidelity to that model, we continue to believe it is the right approach. What the U.S. government is now proposing would convert ICANN into an organization in which the GAC moves from an advisory to a supervisory role - in essence, it would become a mini-UN for the Internet, exercising ultimate veto power over any new policies being considered by ICANN.

Let's start with the new gTLD issue that has so concerned ICA and its members - balanced rules for trademark rights protection.

Some background first: This contentious issue was simmering on ICANN's front burner throughout 2009. The Intellectual Property Constituency (IPC) got ICANN to create an Implementation Recommendation Team (IRT) to suggest a protective regime. ICA and others questioned the IRT's membership and manner of operation, and took strong exception to a number of its recommendations. The IRT report was unable to achieve consensus support within ICANN, so in late 2009 the Board asked the Generic Names Supporting Organization (GNSO), ICANN's lead policy group, to seek consensus. The GNSO in turn created the Special Trademark Issues - Recommendation Team (STI-RT) which, quite remarkably, was able to arrive at unanimous consensus within a few short weeks. The STI-RT's report was adopted by ICANN's Board and now constitutes the rights protection provisions of the AG. ICANN has been on record that the trademark protections in the AG are essentially closed, although the Board will consider revisions that "improve" their implementation.

The DOC has now proposed to not just throw out the work of the STI-RT and return to the IRT recommendations, but to actually go beyond the IRT. On (URS), the U.S. wants the GAC to ask ICANN to instruct its staff to alter the AG to (and we quote):


1.      Shorten the time for filing an appeal in default cases from the current 2 year review period to a considerably shorter time.

2.      Add a "loser pays" model applicable to domain name registrants.

3.      Include the ability to transfer a domain name, so that the complainant is not forced to pursue a further UDRP proceeding to secure the transfer.



We doubt that any registrant losing a URS is going to wait two years to appeal, so we have no objection to revisiting that issue if there's a way to do so without doing violence to ICANN's policymaking process.



But the other two provisions were a bridge too far even for the IRT, and are unacceptable to ICA and its members. They can in no way be characterized as mere "improvements" to the current AG rights protection provisions, and would be highly detrimental to registrant rights.



A "loser pays" regime would give even more power to the large corporate interests who generally initiate UDRPs and would likely be the main users of the URS. Individual registrants already face a substantial economic disparity when they consider contesting a UDRP. A "loser pays" regime would have a broad chilling effect on domain registrations, as a registrant would face the possibility of paying a complainants' URS fees and its legal fees not just in regard to trademarks but to unlimited variants of those marks (when considered in combination with the U.S. position on the Trademark Clearinghouse, discussed below). The IRT Report was quite clear in its rejection of a "loser pays" model, stating:


A number of comments were submitted requesting a loser-pays system. The IRT considered a variety of situations and did not feel that this type of system can be implemented throughout the URS.

Likewise, the IRT emphasized throughout the process that the URS was being proposed as a supplement to, and not a substitute for, the UDRP -- and that a losing registrant would face domain suspension but not transfer. As described in the IRT Report:

The URS will provide a low-cost and rapid means for taking down infringing domain name registrations, yet preserving a registrant's right to a hearing and/or appeal. In addition, the URS does not result in the transfer or cancellation of a domain name registration. Rather domain name registrations found to be violating a brand owner's rights will be placed in a frozen state, for the life of the registration, and only will resolve to a specific error webpage. (Emphasis added)

 A footnote in the IRT Report further explains its reasoning:

The IRT received comments relating to the transfer of domains as a possible remedy of the URS. After much consideration the IRT decided against including transfer as a remedy since transfer as a remedy is already available in the UDRP and under applicable national law, such as the Anti-Cybersquatting Consumer Protection Act ("ACPA") in the United States. The URS is foreseen as just one of the tools available to brand owners for dealing with brand abuse in the domain name system. By keeping the remedy of the URS to 1) locking of the domain registration and 2) taking down the associated harmful use, the URS can remain quick while still balancing the right of the registrant by not transferring the property during an expedited process. In leaving transfer as a remedy to the UDRP and ACPA, the URS fulfills its purpose of becoming an addition to the existing available mechanisms without displacing the UDRP or ACPA. (Emphasis added)

By now proposing to make domain transfers available through the URS, the DOC is advocating that the URS displace both the UDRP and national laws such as ACPA. This would not only overturn the entire ICANN policymaking process that has resulted in the current AG provisions, but would thoroughly undermine the prospects for well considered and balanced UDRP reform. Ironically, the GNSO is set to consider a Motion to initiate an Issues Report on the state of the UDRP on February 3rd that would be the first step in such a reform process.

The DOC recommendations on the Trademark Clearinghouse also raise substantial concerns, especially as a listing in the Clearinghouse is the precursor to a virtual slam-dunk URS decision favoring the complainant. Those recommendations are:


1.      Delete the definition of "substantive evaluation" to make it clear that any trademark registration, regardless of whether examined on substantive or relative grounds, can qualify for participation in the pre-launch sunrise mechanisms.

2.      Expand the Trademark Clearinghouse to cover "trademark + keyword" or typographical variations specified by the rights holder.

3.      Ensure that the Trademark Clearinghouse protection mechanism continues after initial launch.



Point 1, which makes Clearinghouse Registration available to any registration, regardless of examination procedures, will dramatically increase the number of listed marks while diluting their overall quality.



But Point 2 is the real worry - allowing rights holders to specify the typographical variations of a mark that can be registered in the Clearinghouse will lead in many instances to hundreds or even thousands of variations of a single mark, leading to potential URS losses for domains that are multiple degrees of separation away from the actual mark and that are not being used for a purpose that is in any way similar to the product and service associated with the mark. The degree of variation of a mark that qualifies as being "confusingly similar" is a complex matter that should be left to consideration in a UDRP reform process.



As for allowing registration of "trademark+keyword", we're not exactly sure what this means - but it appears to be an attempt to have the trademark protection regime for new gTLDs nullify U.S. and E.U. court decisions that have allowed search engines to sell trademarks as keywords, as well as to overturn recent UDRP decisions that allowed the unauthorized use of a trademark where the domain was associated with a legal business service directed to the trademarked activity. ICA has proposed that the UDRP be brought into alignment with evolving online trademark law, while this proposal seems to want them to inhabit separate universes.



Our concern over these proposals is further exacerbated by a seperate document being circulated, the "Proposed Organisation of GAC-Board meeting Topics". According to it, the GAC leads for the rights protection discussion in Brussels will be Suzanne Sene of the U.S., Mark Carvell of the UK, and Jayantha Fernando of Sri Lanka. We don't know where Sri Lanka stands on these issues, but Ms. Sene will undoubtedly be working to advance these DOC positions, and Mr. Carvell was an outspoken advocate for trademark interests in Cartagena and can be expected to engage in a repeat performance in Brussels.



While we can't predict how this will play out in Brussels, ICA will continue to oppose changes in the URS that would tilt it unfairly against registrants and make it a de facto substitute for the UDRP, while continuing to advocate balanced and well considered UDRP reform through ICANN's standard policy development process. UDRP reforms should be arrived at through careful consensus - not through a last-minute attempt to hijack the URS, make it a UDRP substitute, and then foist that on incumbent gTLDs, including .com, down the digital road.



Other key positions advocated by the DOC as recommended GAC starting points include:

*         A waiver of any fees for governments participating in the new gTLD evaluation process - which will only encourage governmental interventions.

*         Review by governments, through the GAC, of all new gTLD applications - with any GAC member able to raise an objection to a proposed string "for any reason", and with that single objection being sufficient to have ICANN block the application unless the GAC reaches a consensus to oppose the objection. This would not only give inordinate power to individual governments to quash TLD names associated with dissident groups, but would mean all but certain death for controversial applications like .gay (indeed, it's likely that .xxx would have been rejected out of hand under this approach). It also means that any business organization which doesn't think its objection to a proposed string will prevail under the standard procedure will seek to have a government object on its behalf, given that almost all government objections would constitute a de facto veto.

*         "Community-based" strings would include not just particular groups of people or interests but also strings that refer to particular sectors, particularly (but not limited to) those subject to national regulation. But these days, in the U.S., EU, and other nations, what business sector isn't subject to national regulation? This would give any business sector, through its trade association or other designated representative, control over any string application that might otherwise bring about new online competition.

*         "Community-based" strings would also have to provide evidence of support or non-objection from the "relevant authority/ties", although it's not at all clear who that would be for many potential community applications.

*         "Community-based" strings that are "sufficiently contentious" would also be rejected. This could well encourage the noisy raising of objections to a particular application as a sure-fire means of terminating its chances.

*         ICANN would have to establish criteria for the weighing of potential costs and benefits in the evaluation and awarding of every new gTLD, with all new gTLD applications being required to provide information of the expected benefits of the new gTLD as well as proposed operating terms to "eliminate or minimize costs to registrants and consumers". In addition, community-based gTLDs would have to operate in a manner that did not make it likely they would "impose costs on existing domain owners" - a standard with a totally unclear meaning.

*         ICANN would reverse its position on vertical integration and restrict cross-ownership between registries and registrars except where it is determined that the registry does not have, and is unlikely to ever obtain, market power - that is, ICANN would have to determine that the gTLD faces or will face substantial competition. While we appreciate that ICANN has not given a good explanation for its varying positions on vertical integration, these restrictions could well make it impossible for gTLDs limited to particular groups with small memberships, as well as .brand gTLDs, to operate in an economically viable fashion. It would also turn ICANN into a competition authority for the Internet, expanding its role into antitrust issues properly left to governments.

*         The law enforcement community would be granted its desire to have every applicant undergo a criminal background check; for WHOIS data to be accurate and publicly available; and for applicants offering the highest levels of security to have a leg up in the application process "particularly for those strings that present a higher risk of serving as venues for criminal, fraudulent or illegal conduct (e.g. such as those related to children, health-care, financial services, etc.)". Meaningful criminal background checks are so intrusive of privacy that even squeaky clean individuals may think twice before submitting an application.



Our three big takeaways from review and analysis of the DOC positions are:

*         Procedurally, if they are adopted as GAC positions and if the ICANN Board acquiesces to any substantial number of them, the GAC will have established that under the AOC it and not the GNSO is the final arbiter of any ICANN policy development process. This would mean the effective end of ICANN as a private-sector led entity developing policy through a bottom-up consensus process and its transformation to a government-dominated entity in which every policy initiative would have to be vetted with the GAC at its inception and be subject to ultimate GAC veto.

*         Substantively, adoption of many of these provisions would substantially shrink the universe of potential applicants for new gTLDs, both because many would be unable to provide new required supporting information or would be subject to some unexplained government's objection.

*         Mechanically, given that there is a scant eleven days between the end of the Brussels consultation and the initial meetings of ICANN constituency groups in San Francisco, it is difficult to see how changes of the magnitude of those advocated by DOC could be transformed into operational language in the AG in time for its final approval in San Francisco. Assuming that the collective minds of the Board and GAC don't meet in Brussels, everything will come down to whether the March 17th meeting in San Francisco clears a path for Board approval of the AG the following morning.



Overall, we have no idea how the Board and the GAC will resolve their gaping differences in Brussels/San Francisco. Since much of the opposition to and concern over new gTLDs has been generated because of ICANN's insistence that it will accept and approve an unlimited number of applications, perhaps ICANN will recede on that point and thereby provide the diplomatic maneuvering room to avoid a publicly webcast train wreck. But developing a new system for evaluating and prioritizing a more limited pool of new gTLDs would bring outcries from impatient investor groups and take some considerable additional time to work out details.



Reportedly, ICANN intended the San Francisco meeting to be a launching party for new gTLDs. The GAC's assertive posture may well make that impossible. When Bill Clinton takes the stage in San Francisco to celebrate the ICANN experiment initiated by his Administration, will that experiment have just been effectively terminated by governmental intervention orchestrated by the Obama Administration?







Philip S. Corwin
Partner
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey
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