Status of this Document: Draft, open for At-Large Community Comments
Final Date for Comments: 28th June 2009
The draft statement below is a response to an open public consultation. The information on that consultation may be found here: http://www.icann.org/en/announcements/announcement-4-29may09-en.htm.
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Draft ALAC Statement on the IRT's Final Report
The At-Large Community recognizes the large amount of work done in a very short time by the IRT working group and thanks the working group for this first step. We are also appreciative of the need to minimize name confusion, as well as forms of abuse such as phishing. However, we have significant concerns about the process that created the IRT, as well as what we believe to be needless haste in its action.
The entire new-gTLD policy development process has been deliberately cautious, with multiple drafts of the application guide and associated comment periods. We are sorry to see that at least one recommendation of the IRT working group, the thick whois, has already been integrated in the application guide, although the IRT report is still being reviewed by the communty. We do not at this stage say if we think that the thick whois model is good or bad, but we wish to highlight the fact that this has been included in the DAG before any consultation took place.
Furthermore, we regret that no representatives of the individual users, domain name registrants or consumers have been part of the drafting group. We are aware of a number of qualified individuals who expressed interest in participating in the IRT but were summarily refused without reason. The IRT also had no representatives of the potential new gTLD operators, the very groups that will be expected to implement the policies resulting from this process.
The undue haste of the process, the refusal to include representatives from the stakeholders to be affected by the IRT's policies, and the complete lack of transparency in the group's selection calls into question the legitimacy of the group's conclusions. We expect that future developments will be more inclusive of the entire ICANN community.
In addition. this report requires an in-depth legal analysis of the IRT recommendations by an independent third party – to see how its recommendations comply with relevant international conventions and treaties – before ICANN commits to support the Globally Protected Marks List proposal or the Uniform Rapid Suspension system.
IP Clearinghouse, Globally Protected Marks List and associated rights protection mechanisms, and standardized pre-launch rights protection mechanisms
Given our reservations expressed above, this section requires significantly more input from all interested and affected stakeholders. As it is proposed, the Globally Protected Marks List poses a significant concern related to community-based gTLDs. We can envision instances in which that a community-specific mark may be better known to local communities, in which case it is the "global mark" that is the cause of end-user confusion. Simply put, The IRT Proposals are both outside the scope of trademark law and outside the scope of ICANN.
ICANN can welcome the creation of a worldwide trademark database, either by WIPO or through a private, market-based solution, but it should neither make this task its own nor delay its own work while others build and populate an “IP Clearinghouse.
Trademark registrants should be entitled to trademark protection, but not a first-right of registration. Prospective domain name registrants should have at least as good an opportunity as anyone else in the world to register a domain name that they intend to use for any lawful, non-infringing purpose. For this reason, "Rights Protection Mechanisms" ("RPMs") should protect trademarks, not allocate domain names. Any RPM that acts as an allocation mechanism should be rejected. By that test, a significant effect of the IRT's "GPM" is to allocate domain names to a certain category of trademark registrant, usurping registration opportunities from registrants, even in countries where the so-called "GPM" has no registration or effect. The premise of the GPM is that certain words cannot be used in other than their trademark sense, anywhere those words are used in the DNS, anywhere in the world.
In other words, trademark owners do not have the right, under law, to remove from our language basic words like pony, sun, tide and cheer. Neither do they have the right of "first dibs" or rights of first refusal to these ordinary words in new gTLDs. Trademark owners don't own strings of characters; their trademark is only a limited right to use the mark for an applied-for set of goods and services. That's the agreement trademark owners accept when they apply for and receive a trademark.
Uniform Rapid Suspension System (“URS”)
Again pending our reservations expressed above to the legality of the proposed system, we believe much of its fairness will depend on the implementation.
A 14 day notice is insufficient to allow individual domain name registrants to react to complaints. In addition, we are concerned about the method of delivery of the notice. The volume and nature of spam has led to e-mail being unreliable as a means of communications for such important notices. The validity of e-mail notifications that may be used in subsequent legal proceedings may easily be challenged under most jurisdictions. Therefore, we believe that any notification needs to be done by registered or certified paper mail. If e-mail is being used at all, it should be used as a backup to paper documentation, and must implement the highest security standards by digitallly signing both headers and content. This would greatly help both in bypassing spam filters and as a legal proof.
As well, given the global nature of the Internet, suspension notices may be ignored or misunderstood in good faith by recipients who do not understand the documents' language. Any such notices must be sent in the official language(s) of the country of delivery, and include text (or a pointer to text) in local language detailing recipients' rights under the process.
The implementation of the URS "takedown" process is needlessly complex and provides inadequate protection to registrants. At a minimum, the right to take down a domain name must have a fixed expiry after its registration (we recommend either 90 or 120 days). This process must be used a tool to clean up unlawful registrations at launch, not for routine trademark enforcement. At some point, registrants need to have confidence that their names are theirs and will not be taken down by a process such as this one. If the URS is intended to be more than such a new-domain tool, it must go through the normal GNSO policy-development process before implementation.
The current URS proposal does not indicate which mechanisms will be put in place to guard against frivolous or other abuse of the URS process. The policy must include substantive penalties and other disincentives to minimize groundless or punitive threats.
"Post Delegation Dispute" is Inappropriate.
The IRT section on a proposed “Post Delegation Dispute” mechanism is poorly described, but the intent seems to be to ask ICANN to expand its contractual compliance program to a registry’s treatment of trademarks. Many of the items described in this section, such as a registry creating an environment for trademark abuse, are hard to measure and inappropriate for either dispute resolution or contractual compliance. The best remedies for the sorts of problems described in this section are in courts of law, not in a new dispute mechanism.
Whois requirements for new TLDs
Our main concern is respect of privacy of the personal data of individuals, as guaranteed under the laws of several countries. We are surprised that the only reference to privacy in the report is about privacy as a (paid for) service. That the issue of privacy as a legal or constitutional right has not even been examined, calls into question the enforceability of these provisions. We encourage the IRT to investigate this matter further, with the assistance of stakeholders with expertise on privacy issues.
A full and fair 60 day public notice period – with special notice to all the Data Protections Commissioners who have participated in past Whois proceedings – would provide a minimum of the input needed for the IRT's new "Whois requirements for new TLDs" section.
Furthermore, the legal need for registrar and registry operators to comply with local laws or international frameworks like the Safe Harbor Agreement would in effect prevent such a public whois system from being effective.
As stated in other contexts before, the ALAC believes that the current whois system should be adapted to balance the right to the privacy of individuals with the legitimate concerns of the IP rights holders, law enforcement agencies and other clearly identified parties. We believe the .tel model is a good compromise and suggest to the board to implement this model in all new gTLDs, whether or not there would be a legal requirement for the registry operator. We think there would be an added value for the Internet users at-large to have a coherent and similar whois system, regardless of the gTLD. We also see advantages for ICANN to have only one model of whois in registry agreements, now ICANN is going for a more industrialized model.
Use of algorithm in string confusion review during initial evaluation
The ALAC reaffirms the position taken in its recent comments on the new-gTLD Applicant Guide, that evaluation of string confusion must be restricted to visual similarity, and not be inappropriately enhanced to include "aural or meaning". This is a very subjective area that would open the door to endless disputes.
Finally, we consider that the policies to be decided should be applied to existing gTLDs, too. If they would be limited to the new gTLDs, this would put them at a competitive disadvantage with the incumbents.
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Comments by Dr. Konstantinos Komaitis - I hope these comments help complement the view of this document
IP Clearinghouse:
Essentially, the IP Clearinghouse seeks to create an entirely new body, administered by ICANN, that will perform similar functions to national trademark offices. The IP Clearinghouse will be acting as the central pool of trademark data and decisions of entry in the DNS will be determined based on the Clearinghouse's - unknown as of yet - criteria. The IRT recommendation tasks the IP Clearinghouse to handle a substantial amount of data without offering any insight as to how the system will be enforced across trademark jurisdictions, its data handled, criteria for entry, and whether there are any external or internal mechanisms in place to ensure its non-biased character and function.
Globally Protected Marks:
Here, again there is no such equivalent list in the context of traditional trademark law and this has been so far a conscious approach. There is not international consensus as to what mark is to be considered so famous as to be worthy of global protection. The Paris Convention and the TRIPS agreement generally provide a quite flexible framework for the protection of famous marks, but, in order to be worthy of such extra protection mechanisms, the mark HAS TO BE famous and/or well known. In light of this lack of international guidance, a good starting point might be the 1995 US Federal Dilution Act, which sets a rather high bar on the determinations of fame:
a. How distinct the mark is;
b. how long and to what extent the mark has been used with the connected goods or services;
c. how much advertising and publicity there has been for the mark;
d. how widespread, geographically, the mark has been used;
e. what channels of trade are used for the mark's associated goods and services;
f. how well organized the mark is in the channels of trade used by the owner and the channels of trade used by the potential diluting mark;
g. how many similar marks are used by third parties and the extent of such use.
These criteria are much stricter than the IRT's proposed (the IRT suggests as the only criterion the geographical spread of the mark). This proposition is not only arbitrary, but it also expands the existing rights of trademark owners beyond the scope of trademark law; it grants them international protection by a simple registration of a domain name and exclusion of others and dismisses the territorial nature of trademark law.
Uniform Rapid Suspension System:
The main question here and before we even comment on the procedural or substantive aspects of the URS is: why not amend the current UDRP? The URS is meant to fight cybersquatting, the same way the UDRP was meant to fight cybersquatting ten years ago. The IRT seeks to create a new system on top of the already problematic UDRP and thus distance courts from the system. The justifications for such a system are mainly economic and lack any legal or social rationalizations. The UDRP originally was created to provide a fair balance between registrants and trademark owners and to a certain extent its wording manages to compromise this conflict; its procedures, however, can evidence the system as biased, inconsistent, which restricts the legal rights of legitimate domain name holders. WE REALLY NEED TO PUSH FOR A REFORM OF THE UDRP.
WHOIS:
On this issue, I would like to add that other bodies, like the EU Data commissioners, should have been invited to provide more input and help assess all the privacy and data protection concerns.
contributed by k.komaitis@strath.ac.uk on 2009-06-18 16:09:50 GMT
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I applaud for this draft for its eloquent and persuasive expression. It almost reflects all the key points in our discussions on the list. I've only a few supplements:
a)IP Clearinghouse, Globally Protected Marks List
We may wish to emphasize that trademarks have always been protected and enforced by national law, which is not changed by any relevant international conventions, particularly Paris Convention or WTO TRIPS Agreement, let alone that not every country or territory is the members of these conventions. ICANN, in its limited technical coordination role as declared in its mission, has absolutely no authority to create any international or even global law to change the territorial nature of trademark rights. What is recommended by IRT is to set up a private ordering through DNS governance by ICANN to create a de-facto global enforcement for trademarks, irrespective of legal limits of trademark protection. We do believe if ICANN go ahead with this line, it will be an obvious mission creep of ICANN.
b)URS
I agree the assessment by Konstantinos that URS could be an unnecessary additional layer of UDRP, though I don't necessarily rely on American law. Another concern over URS is that its rapidness, which will inevitably deprive a TLD string without even full trial of the whole facts. This approach was even abandoned when drafting UDRP.
I may have other comments and will post them later.
contributed by hongxueipr@gmail.com on 2009-06-21 06:45:48 GMT
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I believe, from a consumer advocacy perspective, there is some merit to the notion of a uniform rapid suspension system – something that works quicker and is less onerous to the harmed party than the UDRP. Using the UDRP requires resources that many consumers and small non-profits do not have.
There are numerous examples of registration abuse that are not recognized as such by the ICANN community because there is too much money to be made from registration speculation. Beyond that, however, are domain registrations I believe are fraudulent, if not malicious in intent, that deliberately seek to confuse and mislead consumers. I cite, for example, the weight loss prescription drug phentermine. When a consumer types that term into Google, he or she will find an array of confusing information and links to Web sites that deliberately misspell the name of the drug (phentremine, phentarmine, etc.) and peddle ineffective supplements with specious claims of weight loss efficacy. Another example is the booming Acai berry marketing and sales scam, in which sites register domains with an intent to simulate the names of consumer protection organizations: AcaiBerryWatch.com
contributed by guest@socialtext.net on 2009-06-22 02:48:02 GMT
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(continued from above)
...is an example, as is AcaiBerryTruth.com. Similar marketing tactics occur in the multi-million dollar "colon cleanse" supplement market. In the United States, where severe economic problems have forced millions of homeowners toward foreclosure, dozens of "loan modification" businesses have sprung up that skirt state laws and register domains with names that sound remarkably close to those of government Web sites, and attempt to market themselves as government entities. These types of registrations can be said, in my opinion, to be intentionally abusive, since their intent – to purposefully mislead – is signalled by the content of their string.
contributed by guest@socialtext.net on 2009-06-22 03:07:24 GMT
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"guest user" as above is Beau Brendler
contributed by guest@socialtext.net on 2009-06-22 03:07:59 GMT
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One important thing to remember is that a trademark is a limited property right: what this means is that law does not grant trademarks a blanket protection just because we are talking about a property right. The trademark is subjected to strict rules concerning the associated goodwill, consumer confusion, territoriality or genericness, etc. Now, what trademark owners seek to do via ICANN is to sidestep all these restrictions and instead promote an environment where some of these limitations will be redundant. The example I have used from American Law is only to demonstrate the criteria of when a mark is to be considered famous/well-known and thus worthy of global protection. The bar for global protection mechanisms should be set to a high standard and not to one that seeks to create global rights by virtue of a trademark registration (as the IRT report seeks to do at this stage).
contributed by k.komaitis@strath.ac.uk on 2009-06-22 10:40:35 GMT
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Proposal in probably conflicts between trademarks and Domain Names in a New gTLD`s cases
First of all I consider important to fix some parameters, in order to define one conclusion wich shall be delivered like final proposal. The situation is very complex and will be solved with intelligence and multi knowledge (multi sciences) applications. In this matter are involves multiple differents factors, wich should be considered. I`m sure that we can write a big book with the below concepts, but in order to the short time that I have, I only will make simple considerations wich need to be understand in a global context, and no under only one view (like from only one science or knowledge), because the particular thing is or have sense inside the context, outside means nothing.
1-We are into New Economy of Information Society, or,into a New Economy or, into a New Web Economy. Here we have new situations.
2-The old paradigms have changed, and they are changing permanently. And creating new act and juridic facts each time.
3-The New gTLD`s represent another change into this scenary and could be a new way to see the reality of Internet (Internet Market, Internet law, Internet regulations), and obviously must be regulate in a different way.
4-The law wich current regulate the IP matters is part of the tradicional law, the old law of old paradigms, and in this order we need a new regulations, and an updated Right. (For example, the principle of local aplication of law, now in this Internet Economy should be eliminate or reconsidered, because as we know Internet broke all borders in a communications related.)
5-Trademarks and Domain Names have nothing to do among themselves. meanwhile trademarks are commercials designations wich distinguish one to others and their products into markets; Domain Names are distinctive signs into the web ( like adresses). And their juridic nature are completely different, are two different things, and must be treated different, not like sinonims or the same thing as now are treated by old law and judges.
6-We need to give Juridic Security to the owner or Domain Name registrants, and the current law doesn`t give this, or at least only give late resolutions without security and very expensive solution for the weak part of the relationship, the consumers or end users who want register or who have registered a Domain Name.
7-Is true that ICANN is not who must solve the conflicts presented between Trademarks and Domain Names, but ICANN could avoid them, saying the expressed at point 5.
8-The Enterprises or Trademarks Companies owners, wich are in the relation with End users, have more Economic, Juridic, Informatic and technologic capacity.
9-The asimetries in prior concepts are huge into the relationship mentioned. A conflict in this situation means an big inequality.
10-In the Future and For that reasons (point 9), when the enterprises will register brands, should must register the domain all name related, or not, (and all posibilities who want save). Maybe with a differencial cost per each domain name, and having in account the number of DN registrations ) also. In this manner is probably avoid the future conflicts or cybersquating cases.
11-If after all of these precautions the conflict appear will be the WIPO and with the update UDRP rules, who give the solution.
12-The efficiency means to reduce litigation costs also.
13-The solution have a critic point into consumer or user education. Consumer who is educated and learn the difference between trademark and Domain Name, doesn`t fall in wrong. ICANN need to improve the participation and communications of this issues in order to avoid future conflicts. The evangelization must be continue.
Finally, in a respectfull manner, and having in consideration all the situations mentioned before, the proposal to the ICANN Board is:
1- Make an statement or declaration where be expressed in a clear and a deffinitive way, the difference between Trademarks and Domain Names (just in case some people have not advised yet).
2- Plan a global and strong campaign of information/education about this, in order to limit or avoid future conflicts in the New gTLD`s case.
3- Give to enterprises or trademark companies owners (acrediting this situation previously and in a strong way), a grace period to register or reserve Domains Names who consider relevants for their bussineses, and depending (or not) the number of domain names registered, consider a different cost per each ones.
4- Give to domain name registrants, after the conclusion of grace period, the Juridic security that are, and will be the owners of the registered domain names over any other who want to have this.
5- If some conflict appears after the Domain Name is registered. Stablish that the authority who judge this, it will do under a sumary and strict process, with and under determinated strong parameters for the complainant (for example, given the burden of proof to him). In this process the cost for the end user, or domain name owner must be reduced, and only required to pay legal fees or administratives ones in case that will be result the loser. This will make that who have different possition in front to the conflict, assume also different charges, and having in account the prerrogatives given at the begining in the process of registration (grace period).
Carlos Dionisio Aguirre – ALAC member by LACRALO
contributed by guest@socialtext.net on 2009-06-23 03:02:34 GMT
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Comments on the final statement on the IRT report
I. The creation of the IP Clearinghouse
The purpose of the IP Clearinghouse is to support new gTLD registries in operating cost-effective Rights Protection Mechanisms of all kinds that do not place a heavy financial or administrative burden on trademark owners.
A trademark is an ever-changing right. For example, it can be renewed or not. To be efficient, the database will have to be kept up to date.
Due to the fact that the trademark owners themselves must take the initiative to participate in this database, maintaining a timely and up-to-date database might prove difficult.
Registering at the IP Clearing House should not constitute a supplemental cost for the trademark owners.
The IP Clearing House will have to be internationally recognized as a competent authority in order to ensure the legal authority of the process managed by the IP Clearinghouse.
Because certain aspects of the IP Clearing House lie beyond the scope of ICANN, it should be stressed that the IP Clearing House must be managed by a third party knowledgeable about Intellectual Property Rights.
II. The Uniform Rapid Suspension System
The purpose of the URS is to provide a cost-effective and timely mechanism for brand owners to protect their trademarks and to promote consumer protection on the Internet.
Complaints must include PDF copies of :
- the Whois record for the domain name(s); and
- the website showing the alleged violation(s).
The URS procedure in its actual state does therefore not require enough evidence from the Complainant to unquestionably prove his rights and the violation therein.
The URS should specify the necessary pieces of evidence required from trademark owners wishing to mount an opposition against a new TLD registration. For example, registration certificate of the opposed trademark.
It is vital to provide exhibits or schedules to the complaint and parties should not neglect this if they want to succeed. Asserting facts without providing the relevant evidence is not sufficient.
Requesting certified copies of the trademark registration can be considered as too strict. At least, a recent extract of an official database could be required, together with the copy of the registration or renewal certificate.
In order to be effective, it is necessary that sufficient measures be taken to ensure the compliance with the decisions made in the scope of this new procedure.
The organization in charge of the URS will have to be internationally recognized as a competent authority.
Marie-Emmanuelle HAAS
Attorney at law
contributed by guest@socialtext.net on 2009-06-23 14:48:17 GMT
