At-Large Workspace: GNSO Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process Phase 1 Final Recommendations for ICANN Board Consideration

Public Comment Close	Statement Name	Status	Assigned Working Group	Assignee(s)	Call for Comments Open	Call for Comments Close	Vote Open	Vote Close	Date of Submission	Staff Contact and Email	Statement Number
21 May 2021	GNSO Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process Phase 1 Final Recommendations for ICANN Board Consideration	ADOPTED 15Y, 0N, 0A	CPWG	Gregory Shatan	12 May 2021	17 May 2021	17 May 2021	20 May 2021	21 May 2021	Ariel Liang policy-staff@icann.org	AL-ALAC-ST-0521-01-00-EN

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Brief Overview

Purpose: This Public Comment proceeding seeks to obtain community input prior to the Board action on the Phase 1 final recommendations of the GNSO Review of All Rights Protection Mechanisms (RPMs) in All gTLDs Policy Development Process (PDP).

Current Status: The GNSO Council approved the Phase 1 final recommendations of this PDP during its meeting on 21 January 2021. As required by ICANN Bylaws Article 3.6.a.(i), 21-day public notice is hereby provided on the policies that are considered for adoption prior to any action by the ICANN Board.

Next Steps: The ICANN Board is expected to take action on the GNSO Council approved Phase 1 final recommendations in accordance with the ICANN Bylaws.

Section I: Description and Explanation

At its meeting on 21 January 2021, the Generic Names Supporting Organization (GNSO) Council voted to approve by a Supermajority all recommendations contained in the Phase 1 Final Report from the Review of All Rights Protection Mechanisms (RPMs) in All gTLDs Policy Development Process (PDP) Working Group. The GNSO's adopted recommendations have been sent to the ICANN Board for its review. In line with the ICANN Bylaws, this Public Comment forum is being opened so that the community has a reasonable opportunity to comment on the adopted recommendations prior to Board action.

The Final report contains thirty-five (35) recommendations addressing the RPMs and associated structures and procedures applicable to gTLDs launched under the 2012 New gTLD Program, specifically:

The Uniform Rapid Suspension System (URS);
The Trademark Clearinghouse (TMCH);
The Sunrise and Trademark Claims services offered through the TMCH; and
The Trademark Post-Delegation Dispute Resolution Procedure (TM-PDDRP).

The Working Group has classified its recommendations for each of the Phase 1 RPMs into three categories:

Recommendations for new policies or procedures – a total number of fifteen (15) recommendations
Recommendations to modify existing operational practice – a total number of ten (10) recommendations; and
Recommendations to maintain the status quo (i.e. as the Phase 1 RPMs were implemented for the 2012 New gTLD Program) – a total number of nine (9) recommendations.

As the Working Group experienced difficulties in obtaining quantitative data concerning the effectiveness of the Phase 1 RPMs, it also put forward an Overarching Data Collection Final Recommendation aimed at addressing this data-related gap.

Among the thirty-five (35) Phase 1 final recommendations, the Working Group reached full consensus on thirty-four (34) recommendations and consensus on one (1) recommendation, which was the TMCH Final Recommendation #1. A Minority Statement was jointly filed by seven (7) members of the Working Group with regard to the TMCH Final Recommendation #1, which can be found in Annex D of the Final Report. It is important to note that the Minority Statement did not oppose the primary thrust of the recommendation, but noted concerns over the scope of "word marks" that can be accepted into the TMCH.

The policy recommendations, if approved by the Board, will impose obligations on contracted parties, as well as service providers with respect to the TMCH, URS, and TM-PDDRP. Under the ICANN Bylaws Section 11.3(i)(x), the GNSO Council's Supermajority support for these recommendations obligates the Board to adopt the recommendations unless, by a vote of more than two-thirds, the Board determines that the policy is not in the best interests of the ICANN community or ICANN.

Section II: Background

The question of who legally has rights to, or is the legitimate holder of, a domain name can be open to dispute. Since the Internet is a global resource and domain name holders are dispersed among numerous different jurisdictions, finding an effective, enforceable and reliable process to resolve rights disputes across various jurisdictions is not an easy undertaking.

Over time, ICANN has developed a number of dispute resolution policies and procedures that attempt to address this issue and provide enforceable remedies for certain types of disputes concerning domain name registrations. These policies are essentially alternative dispute resolution procedures to court litigation that nevertheless do not preclude the initiation of legal proceedings in the appropriate jurisdiction.

In relation to domain name disputes concerning the registration and use of legally protected trademarks, the Uniform Dispute Resolution Policy (UDRP) is the longest standing alternative dispute resolution procedure, which has been an ICANN Consensus Policy since 1999.

As a result of the 2012 New gTLD Program, several new rights protection mechanisms (RPMs) were also developed to mitigate potential risks and costs to trademark rights holders that could arise in the expansion of the new gTLD namespace, and to help create efficiencies for registration service providers among gTLD launches. These new mechanisms are the URS, the TMCH and the associated availability through the TMCH of Sunrise Periods and the Trademark Claims Service, and the TM-PDDRP.

Prior to the launch of the New gTLD Program, on 3 October 2011 ICANN staff had published a Final Issue Report on the current state of the UDRP. The recommended course of action in that UDRP Report was not to initiate a Policy Development Process (PDP) at the time, but to hold off launching any such PDP until after the new URS had been in operation for at least eighteen (18) months.

Subsequently, on 15 December 2011, the GNSO Council requested that ICANN staff prepare and publish a new Issue Report on the state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to the UDRP and URS. As a result of that GNSO Council request, the Final Issue Report on a PDP to Review All RPMs in All gTLDs was published on 11 January 2016.

On 18 February 2016, the GNSO Council voted to initiate the PDP on the Review of All Rights Protection Mechanisms (RPMs) in All gTLDs. On 15 March 2016, the GNSO Council approved the PDP Charter for the review to be conducted in two phases. Phase 1 focuses on reviewing all the RPMs and associated structures and procedures applicable to gTLDs launched under the 2012 New gTLD Program. Phase 2 will focus on reviewing the Uniform Dispute Resolution Policy (UDRP), which has been an ICANN Consensus Policy since 1999. On 21 April 2016, the Working Group held its first meeting to commence its Phase 1 work and has been meeting regularly since that time.

The Working Group's Charter, as approved by the GNSO Council, maps out the deliverables expected in each phase of work and notes the need for the Working Group to track and if appropriate, coordinate its work with other relevant efforts underway. Under this Charter requirement, the Working Group took into consideration the outcome of these efforts, including the TMCH Independent Review, the Competition, Consumer Trust and Consumer Choice Review (CCT), the Expedited PDP (EPDP) on the Temporary Specification for gTLD Registration Data, and the New gTLD Subsequent Procedures (SubPro) PDP. The Charter also includes several general, overarching questions as well as a number of additional questions that the Working Group is expected to address at the conclusion of Phase 1 or Phase 2 of its work, as appropriate.

As this PDP is the first time that the RPMs have been subject to a policy review by the ICANN community, there were no comprehensive studies or data collected that measured their effectiveness. The Working Group agreed early on in its work that, in order to fulfill its Charter requirements and effectively review each of the Phase 1 RPMs, it would need to analyze any available data (including data reported by Registry Operators and the various service providers to ICANN org) as well as gather and examine new data that had not been available to date. Accordingly, the Working Group collected and analyzed new data and input from a number of sources via surveys to various stakeholders, interactions with service providers, analysis conducted by third parties, and other methods.

As mandated by the GNSO's PDP Manual, the Working Group published its Phase 1 Initial Report for Public Comment on 18 March 2020. The Working Group used a Google Form to collect public comments. Fifty-five (55) contributions were received (38 from organizations, five from ICANN community groups, and 12 from individuals).

To facilitate its review and analysis of the public comments received, the Working Group used a set of Public Comment review tools and analysis summary documents (see here). From May to September 2020, the Working Group completed its review and assessment of the public comments received through online review, sub group processes, and plenary sessions. As documented in its Phase 1 Final Report, the Working Group agreed to amend some of its preliminary recommendations and include additional recommendations as a result of its review of the input received through the Public Comment Forum.

The Working Group's Phase 1 Final Report was submitted to the GNSO Council on 24 November 2020. Prior to the GNSO Council's vote in January 2021, the GNSO Council discussed the Working Group's recommendations on several occasions, including at a webinar conducted on 11 January 2021 and during the GNSO Council's meeting on 17 December 2020.

On 11 January 2021, John McElwaine, the GNSO Council Liaison to the RPM PDP, submitted a motion to approve the Phase 1 Final Report to the GNSO Council mailing list. The GNSO Council passed the resolution via a unanimous vote during its meeting on 21 January 2021. For additional details, see the transcript and the minutes from the GNSO Council's January 2021 meeting.

Section III: Relevant Resources

Phase 1 Final Report

Section IV: Additional Information

PDP Working Group Charter
PDP Working Group Wiki Workspace

Section V: Reports

FINAL VERSION SUBMITTED (IF RATIFIED)

The final version to be submitted, if the draft is ratified, will be placed here by upon completion of the vote.

FINAL DRAFT VERSION TO BE VOTED UPON BY THE ALAC

The final draft version to be voted upon by the ALAC will be placed here before the vote is to begin.

AT-LARGE ADVISORY COMMITTEE

ALAC Statement on the Phase 1 Final Report on the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process

The At-Large Advisory Committee (ALAC), on behalf of the At-Large Community, thanks the Review of All Rights Protection Mechanisms in All gTLDs PDP Working Group (RPM PDP WG) for its significant efforts resulting in the Phase 1 Final Report. The Phase 1 Final Report reviews the Uniform Rapid Suspension (URS) process, the Trademark Clearinghouse (TMCH), Sunrise registration process, the Trademark Claims Process and the Trademark Post-Delegation Dispute Resolution Procedure (TM-PDDRP).

The ALAC responded to the request for comments on the RPM PDP WG Preliminary Report in May 2020, via the form-based input tool. The ALAC now responds to the request for comments to the Final Report. This Statement is largely consistent with ALAC comments on the Preliminary Report, though ALAC notes that the Report evolved in a number of respects.

The ALAC has focused in its response on recommendations that are consistent with the ALAC’s principles and goals. These include improving accountability and transparency; expanding uses of languages other than English; improving data gathering and supporting the use of metrics; improving the comprehensibility and intelligibility of ICANN policies and requirements to the benefit of end-users (among others); and improving access to processes. The ALAC has also indicated its support for maintaining policies that are working as intended, which improves predictability, access and understanding. However, where matters were technical, administrative or of significant concern only to RPM participants, the ALAC has not provided a substantive response.

URS Final Recommendations

Final Recommendation 1: (Amend USR rules to clarify that only publicly available WHOIS/RDDS data needs to be inserted in the initial Complaint. Complainant may update the Complaint after receiving updated registration data) Support. This is consistent with related efforts to comply with GDPR.

Final Recommendation 2. (URS Panelists have discretion to publish or to redact full registration data in the URS Determination decision. Parties may also request redaction.) Support with modifications. Redaction should only be used in exceptional circumstances on a fact-specific basis, taking into account both the data privacy interests of the Respondent and principles of accountability and transparency in connection with URS proceedings.

Final Recommendation 3: (Panel may order that submissions in a language other than the language of the proceedings be accompanied by a translation.) Support. Translation into the language of the proceedings improves due process and is consistent with ALAC principles.

Final Recommendation 4. (Notice of Complaint must be translated by Provider into the language of the Registration Agreement. Providers must send Notice of Complaint to Respondent by all methods mentioned in the URS Procedures.) Support; this is consistent with ALAC principles of accessibility and use of appropriate languages.

Final Recommendation 5: No opinion; procedural issue not of sufficient concern to end users.

Final Recommendation 6: (Providers should publish list of Examiners along with their CVs, identifying how often each one has been appointed a providing links to decisions.) Support; consistent with ALAC general principles of transparency.

Final Recommendation 7 (Each Provider should publish and reasonably enforce an Examiner Conflict of Interest policy.) Support; consistent with ALAC general principles of transparency and fairness.

Final Recommendation 8 (ICANN org should develop compliance mechanisms applicable to the URS activity of Providers, Registries and Registrars, and metrics for measuring performance of these parties.) Support. This Recommendation is consistent with principles of accountability, reliance on metrics and ability to seek redress, all of which are supported by the ALAC.

Final Recommendation 9. (Educational materials should be developed to provide guidance to all URS participants on URS requirements to meet the “clear and convincing” burden of proof, in the form of a checklist, template or FAQ.) Support. This recommendation improves access by providing assistance to those who may not be able to afford to retain legal counsel.

Final Recommendation 10. (Informational materials should be developed to provide guidance to Complainants and Respondents, such as FAQ, forms and reference materials). Support. This recommendation improves access by providing assistance to those who may not be able to afford to retain legal counsel.

Final Recommendation 11: (After URS Providers receive contact details from relevant WHOIS/RDDS data, Providers must send notices to the Respondent by all required methods.) Support; this is a clarification of current good practices.

Final Recommendation 12: No opinion; administrative issue not of significant concern to end-users..

Final Recommendation 13: (Examiners should be required to document rationale for decision in sufficient detail; URS Providers should provide guidance to Examiners (e.g., checklist, template).) Support. This recommendation is consistent with ALAC principles of accountability and transparency.

Final Recommendations 14 and 15: No opinion; administrative issues not of significant concern to end-users..

TMCH Final Recommendations

Final Recommendation 1: (Scope of TMCH should be clarified so that it does not include non-trademark strings such as geographical indications, protected designations of origin or other quality schemes that are not trademarks. Also clarify that TMCH Providers may provide ancillary databases for non-trademark strings.) Support. This clarifies the scope of the TMCH consistent with its role, while clarifying that other databases can be provided for other purposes.

Final Recommendation 2: (Maintain TMCH status quo on other matters.) Support. The current policies appear to be working as intended.

Final Recommendation 3. (TMCH Validation Provider should educate rights-holders, registrants and potential registrants regarding TMCH and consider enhancing educational materials.) Support. This improves accountability and transparency and is consistent with general goals of improving understanding of all aspects of the Domain Name System by end-users.

Final Recommendation 4: No opinion; technical issue not of significant concern to end0users.

Sunrise Final Recommendations

Final Recommendation 1: (Registry Agreement should provide that Registry Operator will not intentionally circumvent mandatory RPMs or reasonable use of the Sunrise RPM). Support. Practices of some registries raised concerns about efforts to circumvent policy; however, the ALAC cautions against actions that would directly regulate registry pricing.

Final Recommendation 2: (Maintain Sunrise status quo on other matters.) Support. The current policies appear to be working as intended.

Final Recommendation 3. No opinion; administrative issue not of significant concern to end-users.

Final Recommendation 4: (Maintain Sunrise status quo on registration only for identical matches.) Support. The current policies appear to be working as intended.

Final Recommendation 5: (Maintain Sunrise status quo and do not recommend limiting scope of Sunrise by categories of goods and services in trademark registrations.) Support. The current policies appear to be working as intended.

Final Recommendations 6 and 7: (Maintain Sunrise status quo and do not recommend a challenge mechanism to Premium Names and Reserved Names or a requirement to publish Reserved Names lists.) Support. The current policies appear to be working as intended.

Final Recommendation 8: (Clarify that TMCH dispute resolution procedure is primary mechanism to challenge the validity of a TMCH record used to support a Sunrise registration.) Support. This clarifies current practice and makes rules more understandable.

Trademark Claims Final Recommendations

Final Recommendation 1: (Continue requirement for mandatory Claims Period, with exceptions for Specification 13 (.Brands) and Specification 9 (Section 6) (gTLDs without multiple second level registrants). Support. This is a process improvement.

Final Recommendation 2 (Claims Notice must be in English and in language of the registration agreement, with a link to webpage with translations in all six UN languages). Support. This recommendation is consistent with policies of transparency, clarity and comprehensibility for the broadest group of end-users and other participants. This recommendation is consistent with principles of supporting uses of languages other than English and using primary languages of participants.

Final Recommendation 3 and 4. (Maintain status quo on mandatory Claims Period and on use of exact match criteria for Notices) Support. The current policies appear to be working as intended.

Final Recommendation 5. No opinion; administrative/technical issue not of significant concern to end-users.

Final Recommendation 6. (Revise Trademark Claims notice to improve comprehension) Support. This recommendation is consistent with policies of transparency, clarity and comprehensibility for the broadest group of end-users and other participants.

TM-PDDRP Final Recommendation

Final Recommendation 1: (Allow consolidation of Complaints against the same registry under certain circumstances.) Support.. This is a process improvement that appears consistent with carrying out the intent of current policies.

In closing, the ALAC once again thanks the members of the RPM PDP WG for their years of hard work and support for the continuing evolution of ICANN policies and processes.

DRAFT SUBMITTED FOR DISCUSSION

The first draft submitted will be placed here before the call for comments begins. The Draft should be preceded by the name of the person submitting the draft and the date/time. If, during the discussion, the draft is revised, the older version(S) should be left in place and the new version along with a header line identifying the drafter and date/time should be placed above the older version(s), separated by a Horizontal Rule (available + Insert More Content control).

DRAFT

AT-LARGE ADVISORY COMMITTEE

ALAC Statement on the Phase 1 Final Report on the Review of All Rights Protection Mechanisms in All gTLDs Policy Development Process

The At-Large Advisory Committee (ALAC), on behalf of the At-Large Community, thanks the Review of All Rights Protection Mechanisms in All gTLDs PDP Working Group (RPM PDP WG) for its significant efforts resulting in the Phase 1 Final Report. The Phase 1 Final Report reviews the Uniform Rapid Suspension (URS) process, the Trademark Clearinghouse (TMCH), Sunrise registration process, the Trademark Claims Process and the Trademark Post-Delegation Dispute Resolution Procedure (TM-PDDRP).

The ALAC responded to the request for comments on the RPM PDP WG Preliminary Report in May 2020, via the form-based input tool. The ALAC now responds to the request for comments to the Final Report. This Statement is largely consistent with ALAC comments on the Preliminary Report, though ALAC notes that the Report evolved in a number of respects.

The ALAC has focused in its response on recommendations that are consistent with the ALAC’s principles and goals. These include improving accountability and transparency; expending uses of languages other than English; improving data gathering and supporting the use of metrics; improving the comprehensibility and intelligibility of ICANN policies and requirements to the benefit of end-users (among others); and improving access to processes. The ALAC has also indicated its support for maintaining policies that are working as intended, which improves predictability, access and understanding. However, where matters were technical, administrative or of significant concern only to RPM participants, the ALAC has not provided a substantive response.