First, Do No HARM by Philip Corwin

Internet Commerce Association logoIs it really less than a week ago that Melbourne IT (MIT) hosted a Washington, DC forum on “Trademarks and New gTLDs”? The calendar says that it was, but intervening events make the discussion that took place feel outdated already — given that the one item on which there was clear consensus among almost all event participants (ICANN moving forward with implementation of Uniform Rapid Suspension (URS)) appears to be launching, while ICANN’s new CEO subsequently sent a letter to Congress throwing cold water on two key items in the brand community’s wish list.

The focus of the event was supposed to be MIT’s High At-Risk Marks (HARM) proposal, which envisioned a circumscribed set of global, non-generic word trademarks receiving a higher level of required rights protection in new gTLDs. While we had strong concerns about some aspects of the HARM trial balloon – especially the notion that a URS brought against a HARM-listed mark would bring automatic domain suspension if the registrant did not pay a response fee within 48 hours – we nonetheless commend MIT for putting a well-reasoned and circumscribed proposal out for consideration. But the day’s discussion ranged far beyond HARM, especially after brand representatives at the event made clear that its requirements were too restrictive for their taste. This led MIT CTO (and ICANN Vice Chair) Bruce Tonkin to remark post-event, “There doesn’t seem to be enough support for line-drawing.” So HARM, R.I.P., we hardly knew you.

Mr. Tonkin kicked off the event with remarks that the Applicant Guidebook (AG) contained a “minimum set of protections” and that “now is the time to review the mechanisms in light of the TLDs applied for”. Most of the panelists chosen for the event represented brand interests and made predictable arguments for significant expansion of the breadth of listings in the Trademark Clearinghouse (TMC) and the length of its operation, as well as for converting URS from a limited supplement to the existing UDRP to a full-bore substitute, at a much cheaper price for complainants at the expense of cheapening registrant rights.

But some of the comments did surprise us, such as that of Dan Jaffe of the Association of National Advertisers (ANA), a group that had hoped to delay the acceptance of new gTLD applications. Mr. Jaffe declared that “there is no URS at the present time”, which is certainly news to us as well as everyone else in the ICANN community who had debated its contours at extended length. We were also taken aback by Andrew Abrams of Google, who gave an interesting presentation on the various business models contained within its 98 gTLD applications – but them went on to endorse changing the URS by lowering its burden of proof to the same as a UDRP, and to imposing a
“loser pays” rule on the registrant of even a single domain at issue. When the time came for audience comment ICA pointed out that this was a rather confounding endorsement from Google, which had helped lead the fight against the SOPA legislation for the exact reason that it would subject domains to suspension aka ”censorship” based upon allegations of IP violations but absent adequate due process for registrants. Our post-event conversation with Mr. Abrams indicated that Google may reexamine its URS position.

One panelist who stood out from the crowd was Jon Nevett of leading gTLD applicant Donuts, who made a strong argument that the AG should be considered closed and that any new rights protection mechanisms (RPMs) should only be considered in the context of a policy development process (PDP) applicable to all gTLDs. ICA, for its part, has long been on the record favoring initiation of a PDP for procedural UDRP reform, but it was pressure from brand interests that have deferred its start until at least mid-2015. Mr. Nevett pointed out that Donuts has additional rights protections baked into its applications, such as a Domain Protected Marks List (DPML), and made the case for allowing such experimentation by applicant groups to test the efficacy of such measures before even thinking about requiring them from all.

When the discussion was opened to the audience, ICA noted that the existing RPMs came out of a two year ICANN community debate and were unanimously endorsed by the GNSO Council and the ICANN Board, so they shouldn’t be casually tinkered with – while not rejecting all proposals out of hand, we think there has to be a mighty high bar for any alterations.

As for the major brand rationale for performing RPM surgery – that there were 1400 unique gTLDs being applied for – we pointed out that by the time the Board approved the existing measures there was an expectation of at least 500-1,000 applications, and that the existing RPMs do scale for whatever number of new gTLDs come into being. We also made clear that since the URS had been adopted on the basis that it was to be a limited supplement to the UDRP, we’d strongly oppose any bait-and-switch attempt to convert it into a cut-rate UDRP substitute.

From other comments, it was also clear that many applicants, registries, and registrars were very concerned by any proposed alteration of the TMC warning system that would result in an inordinate number of false positives. The trademark for insurance company ING came in for several mentions, since any TMC registration warning system triggered by the multiple words containing such a trademark – such as domaining – could scare off potential registrants in droves.

As noted, the one item on which all parties seemed to agree was that ICANN was way overdue on URS implementation. Perhaps not coincidentally, the very next day an ICANN e-mail properly delegated control of URS implementation to the GNSO Council (see http://internetcommerce.org/URS_Implementation), with this to be a major discussion item at the upcoming Toronto meeting.

But other RPM expansions touted by brand owners at the HARM event got the cold shoulder in a letter sent last week by new ICANN CEO Fadi Chéhade to Congressional leaders (letter available at http://www.icann.org/en/news/correspondence/chehade-to-leahy-et-al-19sep12-en).

In regard to possible extension of the TMC-related claims service requirement beyond 60 days, his letter stated:

There is nothing precluding registries from electing to continue to offer the trademark claims service beyond the required 60-day period; indeed the Applicant Guidebook incentivizes registries to provide rights protections that exceed minimum requirements….For the first round of new gTLDs, ICANN is not in a position to unilaterally require today an extension of the 60-day minimum length of the trademark claims service. The 60-day period was reached through a multi-year, extensive process within the ICANN community. One reason for this is that there are existing IP Watch services that address this needs. Those community members that designed the Trademark Claims Service were cognizant of existing protections and sought to fill gap, not replace existing services and business models. (Emphasis added)

And, on another key RPM expansion being pushed by brand owners – going beyond exact matches of trademarks for TMC purposes — he had this to say:

It is important to note that the Trademark Clearinghouse is intended as a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights. The principle that  rights protections “should protect the existing rights, but neither expand those rights nor create additional legal rights by trademark law”  was key to the work of the Implementation Recommendation Team…Though ICANN cannot mandate that the Trademark Clearinghouse provide notices beyond those required in accordance with the Registry Agreement, there is nothing to prevent the Trademark Clearinghouse or others from offering additional services that would, for example, give notice regarding various forms of a trademark. (Emphasis added)

So what is the way forward in the wake of the HARM discussion and these subsequent ICANN actions? In his opening remarks, Mr. Tonkin outlined three potential routes:

  1. 1.    “Best practices” implemented voluntarily by new gTLD applicants. — This already exists in proposals from Donuts, Uniregistry, and other applicants and requires nothing from ICANN except encouragement. Registrants are free to consider whether they wish to be subject to such additional measures before acquiring a domain at any new gTLD.
  2. 2.     “Formal advice” to the ICANN Board from various ICANN constituencies, stakeholder groups, houses, and councils. – In our view, advice is fine but the GNSO Council, as the ICANN entity responsible for gTLD policy, must play a central and critical role lest we see more lobbying of the Governmental Advisory Committee (GAC) by brand interests designed to circumvent the Council, with subsequent political pressure on the ICANN Board such as that which has already resulted in some whittling down in registrants’ procedural rights.
  3. 3.    A formal PDP, the results of which would be mandatory for all gTLDs. – As Mr. Tonkin noted, this has the strongest impact but also takes the longest time. And it’s hard to envision a PDP that would consider new RPMs for presently nonexistent gTLDs as well as for those with tens of millions of domain registrations, such as .com, that could be completed prior to the expected early 2014 launch of new gTLDs.

So that’s where things stand today, but clearly more surprises could be in store in the weeks leading up to the Toronto meeting.

As ICA prepares to fully participate in that Canadian forum, our number one priority will be, “First, do no harm – to registrant rights.”

This post by Philip Corwin from the Internet Commerce Association was sourced with permission from:
internetcommerce.org/Do_No_HARM