ICANN=?WINDOWS-1252?Q?=92s_?=11th-Hour Domain Name Trademark Policy Negotiations: The Good, the Bad, and the Ugly

[Robin Gross]

Below is my report from the ICANN trademark policy meeting last week  
in LA.

http://tinyurl.com/aanls3e

ICANN’s 11th-Hour Domain Name Trademark Policy Negotiations
The Good, The Bad, and The Ugly – Dissecting the Strawman
By Robin Gross  - 18 November 2012

ICANN organized a meeting on 15-16 November 2012 in Los Angeles, the  
Trademark Clearinghouse policy negotiations, to consider the 8-point  
policy requests sent by the Intellectual Property and Business  
Constituencies (IPC-BC) to the ICANN board and senior staff in a  
letter of 16 October 2012.  ICANN’s Non-Commercial Stakeholders  
Group (NCSG) sent a response to the IPC-BC Letter on 1 November  
2012.  I participated on behalf of noncommercial users in the policy  
meeting in person in LA on 15 November, and then for part of the  
discussion on 16 November via telephone.  Kathy Kleiman also  
participated in the discussion via telephone from DC for NCSG on the  
15th and the latter part of the 16th.  Below is my personal  
evaluation of the meeting and my initial reactions to the output of  
the meeting pending further discussion with the NCSG Policy Committee.

The Good: Dangerous Blocking Proposal was Defeated

The good news is that the most dangerous proposal was defeated.  The  
IPC-BC’s proposal to block Internet domain name registrations based  
on trademarks was unequivocally rejected by the meeting  
participants.  Given its absence of any support outside the IPC-BC  
proponents, the participants did not include the blocking mechanism  
as a possible policy at this time.

A wide range of participants objected to the registration blocking  
proposal for a variety of reasons. Kathy raised strong procedural  
concerns about introducing blocking after so much of ICANN’s time,  
attention and energy had already been spent on a fervent debate on  
the topic.  She then raised the deep substantive concerns of allowing  
a trademark owner to reserve the right to block its trademark across  
all 1000+ new gTLDs, regardless of their applicability to the  
trademark’s registered categories of goods and services.  It’s a  
point that NCSG has been made many times, and one first developed by  
Kathy and Dr. Konstantinos Komaitis in 2008 in response to the GPML  
(Globally Protection Marks List).

Other members of the community also rejected the blocking policy  
proposal.  Registries raised concerns about the blocking policy’s  
presumption of guilt on the part of Internet users in contradiction  
to well-settled due process protections.  Registrars flagged the  
proposal’s danger to the health and growth of the Internet and  
reminded participants of the community’s responsibility to develop  
policies that do not cripple the Internet.  At-Large representatives  
also argued that the blocking proposal was an inappropriate policy  
change that should not be given immediate consideration. So the good  
news is that the dangerous domain name registration blocking proposal  
was stopped (for now).

The Bad: A Strawman Based on a Stacked Deck

The bad news is we seem to have policy proposals to address,  
ICANN’s “strawman model” with possible new and additional  
concessions to be made to the IPC-BC at this late date.  ICANN  
staff’s output of this meeting, the strawman, should not be  
understood as something that participants agreed to, but is rather a  
discussion item for possible consideration based on executive  
decisions.  Some parts of the strawman are indeed technical  
implementation details or other non-changes to GNSO-approved policy,  
and NCSG has no problem with those parts.  But other parts of the  
strawman do propose substantive changes to existing policy and should  
not be accepted by the community and allowed to over-ride the  
legitimate policy development process.

The strawman was discussed at the meeting many hours after the time  
that had been announced for policy discussions, and thus it was  
developed after many participants had already left the meeting  
(including me) to catch our flights back home on the 15th.  The  
imbalance of impacted-interests providing input into the strawman  
proposals (12 CSG representatives to 1 NCSG representative on the  
phone in the middle of night) must be taken into consideration in its  
evaluation.  A straw poll based on imbalanced inputs will obviously  
create imbalanced outputs.

Additionally, the strawman proposals could apply just as equally  
to .com as they would to the new domain names, so its impact could be  
of far greater significance than is generally understood at first blush.

The Ugly: ICANN is Developing Policy Outside of Proper GNSO Process

The most troubling concern is that the Intellectual Property and  
Business Constituencies keep coming again and again to renegotiate  
the same policies.  Its further upsetting that ICANN then feels  
pressured to develop policy proposals in this inappropriate manner.   
We have to learn to respect the proper policy development process and  
the resulting policy compromises and consensus positions reached by  
the entire community.  Even ICANN staff said in L.A. that each of IPC- 
BC proposals being considered was a policy change for which some form  
of policy development process was appropriate.  Yet somehow the  
proposals were still in play for negotiation and ultimately executive  
decision — and ICANN staff did produce a new set of possible changes  
to the policy as currently stated in the Guidebook, the “strawman  
model”.  Private negotiations among an imbalanced ad-hoc group to re- 
open well-settled policy matters is not the way to create legitimate  
policy, but it is developing policy.  And even though it could have  
been much worse – the blocking proposal could have been accepted –  
the fact that ICANN has not learned it cannot make ad hoc policy  
changes outside of proper process is deeply troubling.

We have the same obligations to accountability to the community,  
transparency of process, and equality of participation among impacted  
stakeholders in the development of policy at intercessional meetings  
that we have at other policy development meetings.  Neither executive  
decisions nor private negotiations among select parties fulfill  
ICANN’s commitment to the bottom-up multi-stakeholder policy  
development process.

What Now?  Only Accept Strawman’s Technical Implementation Details

It is now up to the ICANN community to put this matter to bed and  
disregard those parts of the strawman model that re-open previously  
settled policy matters or attempt to create new policies, while  
accepting those outcomes that stayed true to the commitment that the  
meeting not create policy, and are genuinely only technical  
implementation details.

Expanding the scope of the trademark claims service to exact matches  
plus 50 variations of a trademark is a significant policy shift and  
expansion of trademark holders rights, which would require a  
legitimate policy development process to create.  Other big policy  
concessions to the IPC-BC in the strawman include the creation of a  
new “Claims 2” policy, and policies to extend and increase the  
legal liability of domain name registrants against trademark claims.   
The creation of entirely new policies that impact the rights and  
increase the risk for domain name registrants require a policy  
development process.  However, insubstantial increases in the  
duration of Trademark Claims or adding a reasonable notice period to  
the Sunrise process are not terribly problematic and would not  
require a PDP to implement.

Since the stawman is not the outcome of an agreed consensus that  
permitted equal participation from all impacted stakeholders, the  
strawman proposals cannot be said to over-ride the output of  
legitimate policy development and should only be considered for  
implementation where the model settles technical details and not  
policy matters.  Dissection of the strawman proposals are necessary  
to sort-out true implementation from true policy.


Specific Strawman Model Discussion Points & NCSG Initial Responses:

     * Point 1.  All new gTLD operators will publish the dates and  
requirements of their sunrise periods at least 30 days in advance.   
When combined with the existing (30-day) sunrise period, this  
supports the goal of enabling rights holders to anticipate and  
prepare for upcoming launches.

NCSG Response: No Problem.  Reasonable technical implementation  
detail to publish sunrise periods in advance.

     * Point 2.  A Trademark Claims period, as described in the  
Applicant Guidebook, will take place for 90 days.  During this  
“Claims 1″ period, a person attempting to register a domain name  
matching a Clearinghouse record will be displayed a Claims notice (as  
included in the Applicant Guidebook) showing the relevant mark  
information, and must acknowledge the notice to proceed.  If the  
domain name is registered, the relevant rightsholders will receive  
notice of the registration.

NCSG Response: Generally a reasonable technical implementation  
detail, but there is some concern.  The duration of the claims period  
is a change from what is stated in the Guidebook, which provides only  
60 days, but increasing to 90 days does not seem at first blush to be  
a significant substantive change.  However, since registrants are  
required to acknowledge receipt of notice for an extended period of  
time, it does increase the potential for liability, which is worrisome.

     * Point 3.  Rights holders will have the option to pay an  
additional fee for inclusion of a Clearinghouse record in a “Claims  
2″ service where, for an additional 6-12 months, anyone attempting  
to register a domain name matching the record would be shown a Claims  
notice indicating that the name matches a record in the Clearinghouse  
(but not necessarily displaying the actual Claims data).  This notice  
will also provide a description of the rights and responsibilities of  
the registrant and will incorporate a form of educational add-on to  
help propagate information on the role of trademarks and develop more  
informed consumers in the registration process.

NCSG Response: NCSG objects to this entirely new policy created  
outside of the appropriate GNSO policy process.  Substantively, NCSG  
objects to this policy because it creates greater legal liability for  
Internet users who will be deemed to have received “notice of  
infringement” for legal purposes upon sending of such additional  
notice.  Rights and responsibilities are not uniform globally and may  
cause confusion or misinformation, so any “educational” value of  
additional notice does not match the significance of increased legal  
liability for registrants of turning innocent infringers into  
knowingly and willful infringers.  The imposition of criminal  
sanctions, additional monetary damages and other serious legal  
penalties are triggered for registrants who are sent such a notice  
and thus courts will deem them as having “knowledge” of their  
infringement.  These non-trivial considerations must be worked  
through as part of a proper policy development process by the entire  
community.  Creating an entirely new “Claims 2” policy is a  
significant policy change that should go through a proper policy  
development process within the GNSO.

     * Point 4.  Where there are domain labels that have been found  
to be the subject of previous abusive registrations (e.g., as a  
result of a UDRP or court proceeding), a limited number (up to 50) of  
these may be added to a Clearinghouse record (i.e., these names would  
be mapped to an existing record for which the trademark has already  
been verified by the Clearinghouse). Attempts to register these as  
domain names will generate the Claims notices as well as the notices  
to the rights holder.

NCSG Response:  NCSG objects to this major policy change as it  
disregards the role of the GNSO as the policy development instrument  
at ICANN.  Substantively this policy change significantly expands  
trademark holders rights beyond what trademark law permits and beyond  
what is in the Guidebook.  The policy expands trademark holders  
rights at the expense of other legitimate interests, including all  
noncommercial speech.  Just because one party infringes a trademark  
does not mean that all subsequent uses of that word by other parties  
and in entirely different contexts are presumed infringements, but  
this misguided policy does.  Creating a special list of trademarks,  
for which a single default would be sufficient for inclusion on it,  
is obviously a policy proposal requiring legitimate process to ensure  
all interests are considered.  The proposal is also a significant  
policy change because it expands the scope of trademark claims from  
exact matches of a trademark to up to 50 variations.  That’s a big  
change to existing policy.  Criticism of brands and companies as will  
other types of noncommercial lawful uses of words in domain names  
would be chilled by this policy proposal.

     * Point 5.  Possible blocking mechanisms were discussed, but  
were not included in the strawman model.

NCSG Response:  Agree with other participants that blocking of domain  
name registration based on trademarks as proposed by IPC-BC is  
dangerous to the health and growth of the Internet.  NCSG,  
Registrars, Registries and At-Large rejected the blocking mechanism  
from consideration in the strawman proposal after hours of relentless  
debate.  Obviously the creation of an entirely new blocking mechanism  
for domain names is a major policy change, inappropriate as an  
outcome of an informal and imbalanced meeting such as this, and was  
roundly rejected as such.






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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