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ICANN's 11th-Hour Domain Name Trademark Policy Negotiations: The Good, The Bad, and The Ugly

Robin Gross

ICANN organized a meeting on 15-16 November 2012 in Los Angeles, the Trademark Clearinghouse policy negotiations, to consider the 8-point policy requests sent by the Intellectual Property and Business Constituencies (IPC-BC) to the ICANN board and senior staff in a letter of 16 October 2012. ICANN's Non-Commercial Stakeholders Group (NCSG) sent a response to the IPC-BC letter on 1 November 2012. I participated on behalf of noncommercial users in the policy meeting in person in LA on 15 November, and then for part of the discussion on 16 November via telephone. Kathy Kleiman also participated in the discussion via telephone from DC for NCSG on the 15th and the latter part of the 16th. Below is my personal evaluation of the meeting and my initial reactions to the output of the meeting pending further discussion with the NCSG Policy Committee.

The Good: Dangerous Blocking Proposal was Defeated

The good news is that the most dangerous proposal was defeated. The IPC-BC's proposal to block Internet domain name registrations based on trademarks was unequivocally rejected by the meeting participants. Given its absence of any support outside the IPC-BC proponents, the participants did not include the blocking mechanism as a possible policy at this time.

A wide range of participants objected to the registration blocking proposal for a variety of reasons. Kathy raised strong procedural concerns about introducing blocking after so much of ICANN's time, attention and energy had already been spent on a fervent debate on the topic. She then raised the deep substantive concerns of allowing a trademark owner to reserve the right to block its trademark across all 1000+ new gTLDs, regardless of their applicability to the trademark's registered categories of goods and services. It's a point that NCSG has been made many times, and one first developed by Kathy and Dr. Konstantinos Komaitis in 2008 in response to the GPML (Globally Protection Marks List).

Other members of the community also rejected the blocking policy proposal. Registries raised concerns about the blocking policy's presumption of guilt on the part of Internet users in contradiction to well-settled due process protections. Registrars flagged the proposal's danger to the health and growth of the Internet and reminded participants of the community's responsibility to develop policies that do not cripple the Internet. At-Large representatives also argued that the blocking proposal was an inappropriate policy change that should not be given immediate consideration. So the good news is that the dangerous domain name registration blocking proposal was stopped (for now).

The Bad: A Strawman Based on a Stacked Deck

The bad news is we seem to have policy proposals to address, ICANN's "strawman model” with possible new and additional concessions to be made to the IPC-BC at this late date. ICANN staff's output of this meeting, the strawman, should not be understood as something that participants agreed to, but is rather a discussion item for possible consideration based on executive decisions. Some parts of the strawman are indeed technical implementation details or other non-changes to GNSO-approved policy, and NCSG has no problem with those parts. But other parts of the strawman do propose substantive changes to existing policy and should not be accepted by the community and allowed to over-ride the legitimate policy development process.

The strawman was discussed at the meeting many hours after the time that had been announced for policy discussions, and thus it was developed after many participants had already left the meeting (including me) to catch our flights back home on the 15th. The imbalance of impacted-interests providing input into the strawman proposals (12 CSG representatives to 1 NCSG representative on the phone in the middle of night) must be taken into consideration in its evaluation. A straw poll based on imbalanced inputs will obviously create imbalanced outputs.

Additionally, the strawman proposals could apply just as equally to .com as they would to the new domain names, so its impact could be of far greater significance than is generally understood at first blush.

The Ugly: ICANN is Developing Policy Outside of Proper GNSO Process

The most troubling concern is that the Intellectual Property and Business Constituencies keep coming again and again to renegotiate the same policies. It's further upsetting that ICANN then feels pressured to develop policy proposals in this inappropriate manner. We have to learn to respect the proper policy development process and the resulting policy compromises and consensus positions reached by the entire community. Even ICANN staff said in L.A. that each of IPC-BC proposals being considered was a policy change for which some form of policy development process was appropriate. Yet somehow the proposals were still in play for negotiation and ultimately executive decision — and ICANN staff did produce a new set of possible changes to the policy as currently stated in the Guidebook, the "strawman model". Private negotiations among an imbalanced ad-hoc group to re-open well-settled policy matters is not the way to create legitimate policy, but it is developing policy. And even though it could have been much worse — the blocking proposal could have been accepted — the fact that ICANN has not learned it cannot make ad hoc policy changes outside of proper process is deeply troubling.

We have the same obligations to accountability to the community, transparency of process, and equality of participation among impacted stakeholders in the development of policy at intercessional meetings that we have at other policy development meetings. Neither executive decisions nor private negotiations among select parties fulfill ICANN's commitment to the bottom-up multi-stakeholder policy development process.

What Now? Only Accept Strawman's Technical Implementation Details

It is now up to the ICANN community to put this matter to bed and disregard those parts of the strawman model that re-open previously settled policy matters or attempt to create new policies, while accepting those outcomes that stayed true to the commitment that the meeting not create policy, and are genuinely only technical implementation details.

Expanding the scope of the trademark claims service to exact matches plus 50 variations of a trademark is a significant policy shift and expansion of trademark holders rights, which would require a legitimate policy development process to create. Other big policy concessions to the IPC-BC in the strawman include the creation of a new "Claims 2" policy, and policies to extend and increase the legal liability of domain name registrants against trademark claims. The creation of entirely new policies that impact the rights and increase the risk for domain name registrants require a policy development process. However, insubstantial increases in the duration of Trademark Claims or adding a reasonable notice period to the Sunrise process are not terribly problematic and would not require a PDP to implement.

Since the stawman is not the outcome of an agreed consensus that permitted equal participation from all impacted stakeholders, the strawman proposals cannot be said to over-ride the output of legitimate policy development and should only be considered for implementation where the model settles technical details and not policy matters. Dissection of the strawman proposals are necessary to sort-out true implementation from true policy.

* * *

NCSG Statement in Response to the IPC-BC 8-Point Demand Letter (1 November 2012)
ICANN Announcement of Strawman Model (16 November 2012)

Specific Strawman Model Discussion Points & NCSG Initial Responses:

Point 1. All new gTLD operators will publish the dates and requirements of their sunrise periods at least 30 days in advance. When combined with the existing (30-day) sunrise period, this supports the goal of enabling rights holders to anticipate and prepare for upcoming launches.

NCSG Response: No Problem. Reasonable technical implementation detail to publish sunrise periods in advance.

Point 2. A Trademark Claims period, as described in the Applicant Guidebook, will take place for 90 days. During this "Claims 1″ period, a person attempting to register a domain name matching a Clearinghouse record will be displayed a Claims notice (as included in the Applicant Guidebook) showing the relevant mark information, and must acknowledge the notice to proceed. If the domain name is registered, the relevant rightsholders will receive notice of the registration.

NCSG Response: Generally a reasonable technical implementation detail, but there is some concern. The duration of the claims period is a change from what is stated in the Guidebook, which provides only 60 days, but increasing to 90 days does not seem at first blush to be a significant substantive change. However, since registrants are required to acknowledge receipt of notice for an extended period of time, it does increase the potential for liability, which is worrisome.

Point 3. Rights holders will have the option to pay an additional fee for inclusion of a Clearinghouse record in a "Claims 2″ service where, for an additional 6-12 months, anyone attempting to register a domain name matching the record would be shown a Claims notice indicating that the name matches a record in the Clearinghouse (but not necessarily displaying the actual Claims data). This notice will also provide a description of the rights and responsibilities of the registrant and will incorporate a form of educational add-on to help propagate information on the role of trademarks and develop more informed consumers in the registration process.

NCSG Response: NCSG objects to this entirely new policy created outside of the appropriate GNSO policy process. Substantively, NCSG objects to this policy because it creates greater legal liability for Internet users who will be deemed to have received "notice of infringement" for legal purposes upon sending of such additional notice. Rights and responsibilities are not uniform globally and may cause confusion or misinformation, so any "educational" value of additional notice does not match the significance of increased legal liability for registrants of turning innocent infringers into knowingly and willful infringers. The imposition of criminal sanctions, additional monetary damages and other serious legal penalties are triggered for registrants who are sent such a notice and thus courts will deem them as having "knowledge" of their infringement. These non-trivial considerations must be worked through as part of a proper policy development process by the entire community. Creating an entirely new "Claims 2" policy is a significant policy change that should go through a proper policy development process within the GNSO.

Point 4. Where there are domain labels that have been found to be the subject of previous abusive registrations (e.g., as a result of a UDRP or court proceeding), a limited number (up to 50) of these may be added to a Clearinghouse record (i.e., these names would be mapped to an existing record for which the trademark has already been verified by the Clearinghouse). Attempts to register these as domain names will generate the Claims notices as well as the notices to the rights holder.

NCSG Response: NCSG objects to this major policy change as it disregards the role of the GNSO as the policy development instrument at ICANN. Substantively this policy change significantly expands trademark holders rights beyond what trademark law permits and beyond what is in the Guidebook. The policy expands trademark holders rights at the expense of other legitimate interests, including all noncommercial speech. Just because one party infringes a trademark does not mean that all subsequent uses of that word by other parties and in entirely different contexts are presumed infringements, but this misguided policy does. Creating a special list of trademarks, for which a single default would be sufficient for inclusion on it, is obviously a policy proposal requiring legitimate process to ensure all interests are considered. The proposal is also a significant policy change because it expands the scope of trademark claims from exact matches of a trademark to up to 50 variations. That's a big change to existing policy. Criticism of brands and companies as will other types of noncommercial lawful uses of words in domain names would be chilled by this policy proposal.

Point 5. Possible blocking mechanisms were discussed, but were not included in the strawman model.

NCSG Response: Agree with other participants that blocking of domain name registration based on trademarks as proposed by IPC-BC is dangerous to the health and growth of the Internet. NCSG, Registrars, Registries and At-Large rejected the blocking mechanism from consideration in the strawman proposal after hours of relentless debate. Obviously the creation of an entirely new blocking mechanism for domain names is a major policy change, inappropriate as an outcome of an informal and imbalanced meeting such as this, and was roundly rejected as such.

By Robin Gross, Founder and Executive Director of IP Justice. I am also the Chair of ICANN's Non-Commercial Stakeholders Group (NCSG).

Related topics: Domain Names, ICANN, Internet Governance, Law, Policy & Regulation

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