NCUC Statement on the ICANN new gTLD Proposal ( .doc file }
The NCUC believes that the Policy is complicated and bureaucratic at best and raises various issues that will impact upon socio-legal structures. Furthermore, the NCUC believes that ICANN is once again venturing in policy-making activities and, similar to the UDRP, the gTLD proposal manifest the inadequacy of ICANN to create policy that complies with fundamental legal standards.
1. Legal Rights
When it comes to the legal rights section most of the recommendations oppose traditional and long-standing principles of trademark law. ICANN continues to support its substantially mistaken rationale and re-enforces the presumption that trademarks and domain names constitute identical rights. This perception is highly supported by the UDRP and it continues to be supported by the new gTLD proposal.
Trademarks and domain names are not the same thing and, under existing and traditional trademark law principles, domain names neither can nor should be equated to trademarks. Both can be used as identifiers, however there are substantial differences between them. First of all and as long as the trademark is not considered well-known or famous, trademark law is highly territorial in nature (thus the lack of any international trademark law treaty). Trademark owners who wish to acquire international protection for their marks should proceed and register their marks individually and comply with each jurisdiction’s rules and procedures. This is not the case with domain names where protection is international because of the global nature of the Internet. Moreover and aside from strict and specific exemptions, geographical and generic terms cannot acquire trademark protection. This of course is not the case for domain names, since under the current domain name registration system any word – geographical or generic – can be registered as a domain name (e.g. loans.com and Barcelona.com). The main reason for trademark law preventing such registrations is to allow competition to flourish and ensure the smooth function of trademark markets. It would be seriously anti-competitive to allow an owner to trademark the word coffee and sell coffee, since this would automatically eliminate other similar businesses from entering the same market. Finally, trademark law allows multiple trademark registrations to exist within the same territory as long as these do not create confusion to the consumers’ eyes. This is a fundamental principle of trademark law and one that is supported by the classification system. Trademarks fall under different classes depending on the goods and/or services they are dealing with and this system ensures that anti-competitive practices do not occur.
The new gTLD proposal resembles the classification system as it currently exists within trademark law. If this is the rationale behind the proposal then the NCUC sees some basic value in it (along the lines of allowing multiple domain name registrations under the various new gTLD strings). However, this does not seem to be the notion behind ICANN’s proposal. Under traditional trademark law, classes allow multiple registrations and are not meant to exclude any existing or potential rights’ holder. The new proposal once again sees the creation of new gTLDS as an elitist activity reserved exclusively for trademark owners. The high costs associated with the applications, combined with the unique nature of domain names, will prevent domain names holder from benefiting from this new arrangement. The following are just a couple of examples, which demonstrate that ICANN has not fully considered any of the legal implications that the new system will create and demonstrate how this new system is meant to benefit only trademark owners to the detriment of domain name holders.
What will happen in the scenario, when two applicants apply for .penguin. “Penguin” is a trademark for both a chocolate bar and a publishing house. Under the new ICANN regime only one trademark owner will be allowed the .penguin extension. What will be the criteria for choice? The NCUC believes that new policy monopolizes verbal territories exclusively to one rights' owner contrary to what trademark law has sought to prevent.
In the same manner, if ICANN allows registrations of generic names as gTLD extensions, serious concerns about anti-competitive practices are equally not addressed. Let’s assume that there is a .food application. Why should it belong only to one business associated with food, which has the financial means to afford the application process? ICANN’s proposal erects significant barriers to entry that could suppress the participation of SMEs and individual entrepreneurs in the market. This could be particularly problematic for potential entrants from the developing and transitional countries and seems especially ill-considered given the current international political debate. When trademark law specifically forbids the registration of generic names as trademarks (again apart from some strict exemptions, i.e. when the trademark has acquired a distinctive character) its main purpose is to prevent anti-competitive practices. Common words are not exclusive rights and, therefore, cannot be used as such.
From an adjudication process point of view, WIPO acting as the dispute resolution provider is by itself problematic as it takes us back to the bias that have been and still are identified in the context of the UDRP. WIPO is an intellectual property organization and as such it will inevitably favor and prioritize applications by trademark owners.
2. Morality and Public Order.
Category 1:
This is a very general term. What does ICANN mean by 'violent lawless action'? For instance, in May 2005, the Council of Europe adopted a new Convention on the Prevention of Terrorism, which requires State parties to criminalize ‘public provocation to commit a terrorist offense’. ‘Public provocation’ means ‘the distribution, or otherwise making available, of a message to the public, with the intent to incite the commission of a terrorist offence, where such conduct, whether or not directly advocating terrorist offences, causes a danger that one or more such offences may be committed’. This provision was the product of a special report that was drafted by experts on the field having considered both apologie du terrorisme’ and ‘incitement to terrorism’. Apologie was interpreted in the sense of the public expression of praise, support, or justification of terrorism. Similarly, the drafters were aware that this legislative approach might have freedom of expression implications, but argued that it could still constitute a legitimate restriction under human rights law.
Examples of indirect incitement or apologie that can be characterized as ‘public provocation’ include ‘presenting a terrorist offence as necessary and justified’, and ‘the dissemination of messages praising the perpetrator of an attack, the denigration of victims, calls for funding of terrorist organizations or other similar behavior’. Such conduct must be accompanied by the specific intent to incite a terrorist offence. It must also cause a credible danger that an offence might be committed, which may depend on ‘the nature of the author and of the addressee of the message, as well as the context’. Basically and especially in relation to the freedom of expression issue, there needs to be credible evidence that a conduct constitutes public provocation. The NCUC cannot really understand how it is possible for a single gTLD to fit in this category.
Category 2
Please check Recommendation R (97) 20 of the Council of Europe and especially principle 3. ICANN has to clarify a variety of issues, such as 'objective criteria' as well as the issue of 'judicial control'. The Recommendation can be found at: https://wcd.coe.int/com.instranet.InstraServlet?command=com.instranet.CmdBlobGet&InstranetImage=568168&SecMode=1&DocId=582600&Usage=2
In this category, (banning "meanness") is NOT an accepted principle of international law as ICANN claims and is also in clear contrast to US law for violating freedom of expression.
What specific jurisdictions did ICANN determine this to be the standard as it claims in the paper? There is a discrepancy amongst jurisdictions that ICANN does not seem to have addressed; this category of prohibited speech might be the “European Standard” but not the US one. So, there is a difference in jurisdictional principles that ICANN has not addressed. Which jurisdiction they will chose and, therefore, which rules are they going to apply?
Principle G of GSNO's Recommendations explicitly state "The string evaluation process must not infringe the Applicant's freedom of expression rights", but that has fallen off of the radar screen of ICANN.
STANDING: The issue of who has standing to object is not determined. The papers say it could be either i) only governments who have standing to object, or ii) anyone in the world would have standing to object.
Objections based on the Morality and Public Order objection will be determined by the International Chamber of Commerce, so there is concern that non-commercial interests won't get a fair shake from ICC, which represents and advocates on behalf the world's largest businesses.
Category 3
It is well-settled principle of international law that child pornography illegal. No argument about that. But "incitement or promotion" to engage in child porn is different than the porn itself. So there is conflation between the law on child porn itself and the law on statements about child porn.
Again it appears ICANN is attempting to regulate the content of websites, not URLs, since a domain name (2-6 letter string) cannot be child porn or sexual abuse of children.
Community
Implementation recommendations for "communities" favour entrenched institutions at the expense of innovators and start-ups. Still no definition of "community", so the community of "Internet users", and the community of "dog owners", and the community of "blondes", and the community of "anything you can imagine" is a "defined community" according to ICANN and will have standing if there is an institution to lodge the objection.
Other issues
The new Policy affords a noticeable amount of discretion to ICANN when deciding whether the applicant meets the set criteria; similarly, the Terms and Conditions seem to exclude any liability for ICANN and its decision-making processes. The new Policy uses words like 'sole and absolute discretion' in a repeated fashion; these concern issues such as the evaluation process of an application, the possibility for ICANN to terminate the registry agreement, to refund the fees to an unsuccessful applicant, etc. At the same time, ICANN is excluding its liability for various issues that raise more concerns: although ICANN says that it will offer a very secure system to 'ensure that confidential information remains confidential', at the same time, they 'offer no assurances that these procedures will keep an applicant's data confidential and secure from access by unauthorized third parties'. This raises issues of privacy and protection of personal information to which ICANN needs to respond.
More worryingly term 6 of the Terms and Conditions states: "APPLICANT AGREES NOT TO CHALLENGE, IN COURT OR IN ANY OTHER JUDICIAL FORA, ANY FINAL DECISION MADE BY ICANN WITH RESPECT TO THE APPLICATION, AND IRREVOCABLY WAIVES ANY RIGHT TO SUE OR PROCEED ON THE BASIS OF ANY OTHER LEGAL CLAIM AGAINST ICANN AND ICANN AFFILIATED PARTIES WITH RESPECT TO THE APPLICATION. APPLICANT ACKNOWLEDGES AND ACCEPTS THAT APPLICANT’S NONENTITLEMENT TO PURSUE ANY RIGHTS, REMEDIES, OR LEGAL CLAIMS AGAINST ICANN OR THE ICANN AFFILIATED PARTIES WITH RESPECT TO THE APPLICATION SHALL MEAN THAT
APPLICANT WILL FOREGO ANY RECOVERY OF ANY APPLICATION FEES, MONIES INVESTED IN BUSINESS INFRASTRUCTURE OR OTHER START-UP COSTS AND ANY AND ALL PROFITS THAT APPLICANT MAY EXPECT TO REALIZE FROM THE OPERATION OF A REGISTRY FOR THE TLD." This provides no leverage to the applicants against ICANN and leaves ICANN's decisions unchallenged by legal authorities – contrary to the UDRP, which allows court litigation.
The NCUC also believes that the costs associated with this process are extremely high.
a) $100 fee to access the application system
b) $185,000 to apply for a domain name
c) $50,000 for Registry Services Review Fee
d) $TBD to file Objection t
The NCUC is certain that the high costs will reduce the incentives for SME and entrepreneurs who, even if they have the incentive, will find it very expensive to apply, especially in light of the fact that ICANN reserves the right not to refund the money to the unsuccessful applications.
Finally, after the panel makes it decision to allow a domain name, the ICANN Board of Directors will still vote to approve or deny the domain name.
