Melbourne IT Plans to Bring HARM to DC by Philip Corwin

By August 30, 2012 ENUM No Comments

Philip Corwin imageMelbourne IT’s involvement with ICANN dates back to 1999, when ICANN awarded it one of the first five registrar licenses to compete with the then-monopoly of Network Solutions Inc. in registering domain names under .com, .net and .org. It remains in the top tier of Internet registrars today, with 4.5 million domains under management. It is also involved with several .brand new gTLD applications, including those of Singapore-based StarHub and the Australian Football League, for which it provided domain strategy and application consulting services while ARI Registry Services(a division of AusRegistry, the .AU ccTLD registry operator) will provide technical backend services.

Last, but certainly not least, Melbourne IT’s Chief Strategy Officer, Bruce Tonkin, who formerly Chaired ICANN’s GNSO Council (the policy arbiter for gTLDs), was elevated to the position of Vice Chair of ICANN’s Board of Directors in June 2011. (We note for the record that Dr. Tonkin recused himself from voting on all matters involving new gTLDs even before MIT’s involvement with the above-referenced .brand applications, and due to potential conflicts does not serve on ICANN’s recently established New gTLD Program Committee.)

All of which adds up to say that we take any policy proposal coming from Melbourne IT very seriously – especially its new suggestions for further strengthening of the rights protection mechanisms (RPMs) for new gTLDs. On August 16th, MIT “released a Community Discussion Paper, entitled ‘Minimizing HARM‘ which outlines a policy alternative whereby organizations with ‘High At-Risk Marks’ should be afforded greater protections at the second level (ie. names to the left of the dot), which ICANN could adopt to boost consumer protection.” (See for the related press release.) MIT is promoting its HARM proposal fairly aggressively – an open forum will be held to discuss it in Washington, DC on the afternoon of Tuesday, September 18th  which any interested party can attend, although MIT requests that an RSVP be sent to by September 13th; MIT also plans to simultaneously webcast the discussion. And MIT also intends to promote further discussion of the HARM proposal at the upcoming Toronto ICANN meeting scheduled in October.

ICA has significant concerns about any reopening of the debate on RPMs for new gTLDs, as the existing ones – the Trademark Clearinghouse (TMC) and Uniform Rapid Suspension (URS) – were only agreed upon after two years of contentious debate within the ICANN community, and ICANN’s Board has since succumbed twice to pressure from the heavily-lobbied Governmental Advisory Committee (GAC) and further scaled back certain registrant protections in the URS. Also, while we accept at face value MIT’s contention that the HARM proposal is motivated by a perception among some organizations that they will need to engage in substantial defensive registrations at the 1400 unique new gTLDs which may be added to the root over the next few years, there are many trademark interests which have repeatedly sought any opening to turn the URS into a cheap substitute for the UDRP by lowering the required burden of proof and adding a domain transfer option, while WIPO has been unremittingly hostile to the URS as presently constituted and would prefer an alternative that looks to us like the DNS version of SOPA. We also can’t help but note that that the very same trademark interests who keep pushing for additional protections at new gTLDs are the same ones who have blocked any near-term consideration of UDRP reform — despite the fact that the UDRP is the only major ICANN policy that has never been reviewed, and the mind-boggling fact that ICANN accredits UDRP providers to cancel or transfer domains without any contractual controls or obligations.

Nevertheless, now that the initial launch date of the first new gTLDs has been pushed back to at least the first quarter of 2014, this reopened debate was probably inevitable and perhaps it is best that it be focused on a relatively restrained proposal such as that proffered by MIT. The full details can be found in the Discussion Paper, but the gist of the HARM proposal is:

  • ·         HARM designation would be available to established global trademarks that match the rights holder’s second level domain name, and which are distinctive and do not match dictionary words in any of the six official UN languages.
  • ·         The rights holder must demonstrate that the trademark has been subject to misleading and deceptive online conduct as demonstrated by multiple successful UDRPs, court actions, or similar evidence.
  • ·         A trademark meeting these criteria could, for an additional one-time fee of $1-2,000, receives certain additional protections.

MIT estimates that a few thousand global marks would meet the screening criteria. However, we assume that many trademark interests will use the HARM proposal as a jumping-off point and seek to expand the range of eligible marks and associated protections while reducing the registration cost.

That is why it is critical that consideration of any new RPM proposal such as HARM go through ICANN’s standard Policy Development Process (PDP) with full involvement of the GNSO Council. This goes far beyond mere tweaks or implementation details of existing RPMs, and should only be considered by the Board if there is strong community consensus. And there is plenty of time for such formal review, given that we are at least sixteen months away from the launch of the first new gTLD.

We also have strong concerns in particular about one of the additional proposed protections, which is that a HARM-related domain at issue in a URS be suspended within 48 hours if the registrant has not paid a response fee within that period. That is an extremely short turnaround time, especially given that complainants control the timing of filings and can choose holidays and other periods when registrant responses are more likely to be delayed. ICANN’s Board has already bowed to GAC pressure and shortened the standard URS response time by a week, and we would oppose any further truncation for disputes that only involve allegations of trademark infringement absent strong evidence of ongoing criminal activities such as phishing, malware distribution, or payment system fraud.

Finally, we have pointed out to MIT that the discussion panel listed for the DC event does not contain any identifiable proponents of registrant rights, and they have advised us that additional participants will be added.

ICA intends to attend the DC HARM forum and to remain actively engaged on this and all other proposals for alterations of new gTLD RPMs. Our top priority will be to assure that nothing in HARM does any material harm to the due process rights of registrants at new gTLDs, and that the collective weight of adopted RPMs does not so discourage registrations at new gTLDs that their potential for competition and innovation is substantially undermined.

This article by Philip Corwin of the Internet Commerce Association was sourced with permission from: