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How Not to Develop Public Policy

Some of ICANN's current proceedings on the introduction of new generic top level domains (gTLDs) provide a case study on how not to develop public policy. In particular, the Rights Protection Mechanism proceedings, with serious implications for trademark owners, have followed a course that does not correspond to the ideal of ICANN's bottom-up, consensus-based processes for policy development. More importantly, these proceedings are effectively unilateral developments in international law without the benefit of treaties or international conventions.

Draft Applicant Guidebook version 3 (DAGv3) is the latest in the series of guidebooks for the new gTLD application process. It contains a place holder for Rights Protection Mechanisms; these have been the subject of an intensive series of proceedings that have produced a number of proposals. At this stage, it appears that trademark owners will not get the kinds of protection they desire, and they will have increasing conflicts with the domain name system (DNS). Their attempts to secure what they regard as basic protections of their rights have not been successful.

In the DNS, the trademark owners of the world find themselves operating in a global legal framework that is mostly separate from the trademark law of the nations of the world. At a time when the Internet is increasingly a market for goods and services, ICANN's ad hoc approach to managing the DNS, the addressing system for this market, includes a legal structure that has largely superseded the customary remedies for trademark infringement. Instead of going to court to attack cybersquatters, trademark owners have been compelled to turn to ICANN for their remedies.

The engineers who created the Internet hoped to avoid conflicts with trademark owners by declaring that the DNS had no connection with trademark rights. As early as 1994, this position became untenable, and the coordinators of the Internet's technical protocols were forced to embark on the slippery slope of dealing with conflicts between trademarks and DNS registrations.

Trademark owners achieved limited success in dealing with their conflicts with cybersquatters when the UDRP was introduced in 1998. The UDRP was the product of a process outside ICANN, although the U.S. Department of Commerce, in the White Paper, made it clear that a procedure for the protection of trademark rights was an essential element of its plans for the new system of technical administration of the DNS. ICANN's charter does not authorize it either to create law or administer it, but the enforcement of the UDRP has made ICANN, in effect, the "International High Court of Trademark Justice" without the benefit of any treaty or other conventional means of developing international law. The UDRP's bad faith standard for testing rights to a registration is applied globally and across national boundaries even though, in some cases, there may be conflicting national rights.

The UDRP is credited by most trademark owners as an effective remedy against cybersquatters because it is preferable to the time, complexity and expense involved in conventional legal actions in national courts. The UDRP is not without critics. Trademark owners complain that it is still too expensive and too slow, and many Internet stakeholders complain that the decisions are sometimes arbitrary and that the system lacks safeguards that are generally available in conventional legal proceedings (e.g., an appeals process). Furthermore, the UDRP does nothing to alleviate one of the principal problems that trademark owners see in the proposals for new domains - the expectation that the need for "defensive registrations" will be an unwelcome accompaniment to every new top level domain.

From the standpoint of the trademark owner, the preferable way to avoid proliferation of domain names (top level or second level) that infringe trademark rights would be a system of vetting new applications for registration against a data base of trademarks. The trademark owner could then take steps to prevent the registration of an infringing name. Unfortunately for trademark owners, this kind of system is antithetical to the way the Internet has worked ever since the inception of the DNS more than twenty-five years ago, and there is no likelihood that the procedures for registering new domain names will change to accommodate the wishes of trademark owners.

The engineering approach to registration of domain names has always been immediate real time registration of any available non-duplicate name on a first come-first serve basis. There have been some limited exceptions, such as sponsored domains that restrict registrations and sunrise periods for the few new domains introduced since ICANN was formed, but the engineering approach remains the operational system for most name registries.

The policy work for the present round of new gTLDs began in December 2005 and was completed by the GNSO in September 2007. The ICANN Board approved the GNSO's recommendations at its Paris meeting in June 2008. A few months thereafter, the first version of the Draft Applicant Guidebook (DAGv1) appeared, with provisions for "Legal Rights Objections" in Section 3.5.2 of Module 3. This section referred to GNSO Recommendation 3 -"Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law". It proposed a panel to "determine whether the potential use of the applied-for TLD by the applicant takes unfair advantage of the distinctive character or the reputation of the objector's trademark or service mark ("mark"), or unjustifiably impairs the distinctive character or the reputation of the objector's mark, or otherwise creates an impermissible likelihood of confusion between the applied for TLD and the objector's mark, by considering [certain specified factors]"

The DAGv1 policy as proposed would give trademark owners a remedy against proposals for infringing top level domains, but would do nothing about the more widespread and continuing problem of infringing second level registrations. Attachment 7 to Module 5 of DAGv1 addressed this by proposing "Rights Protection Mechanisms" in a general way. Each new domain operator would be "responsible for developing and implementing processes or mechanisms for the purpose of protecting legal rights of third parties by discouraging or preventing registration of domain names that violate or abuse another party's legal rights ("RPMs")". This kind of general language does nothing to alleviate the defensive registration problem. Trademark owners saw themselves again faced with the necessity to acquire defensive registrations in each new domain, generally at substantial expense, simply to prevent cybersquatters from grabbing their marks.

Draft Applicant Guidebook version 2 (DAGv2) appeared in February, 2009 and repeated the wording of the Legal Rights Objections section of DAGv1. Attachment 7 of DAGv1 became Specification 7 with no change other than an introductory line: "[Note: the scope of these requirements is the subject of continuing community discussion]"

The continuing community discussion erupted into a major change in the DAG's treatment of trademark issues. The ICANN Board, at its meeting in Mexico City in March, 2009 passed a resolution calling for the Intellectual Property Constituency of ICANN to convene an "implementation recommendation team" (IRT) to "develop and propose solutions to the overarching issues of trademark protection in connection with the introduction of new gTLDs." The IRT was promptly formed, consisting of a blue ribbon panel of prominent trademark lawyers, including one from the gTLD registries, and one from the registrars. It produced its final Report at the end of May 2009. The Report immediately generated controversy, based not only on its conclusions and recommendations, but also on the procedural questions raised by ICANN's delegation of the trademark protection issue to the Intellectual Property Constituency. Debates on the IRT Report were held in New York and London in July, with further consultations in Hong Kong and Abu Dhabi.

The IRT Report made the following five principal recommendations:

  1. IP Clearinghouse, Globally Protected Marks List and associated Rights Protection Mechanisms ("RPMs"), and standardized pre-launch rights protection mechanisms;
  2. Uniform Rapid Suspension System ("URS");
  3. Post-delegation dispute resolution mechanisms;
  4. Whois requirements for new TLDs; and
  5. Use of algorithm in string confusion review during initial evaluation.

Of these, the proposal for a Globally Protected Marks List (GPML) was the only one specifically intended to meet trademark owners' concerns about the need for defensive registrations. The GPML would be a list of trademarks registered by the trademark authorities in a set number of nations in each of five areas of the world. The GPML was not intended to be a list of "famous" marks, but rather a list of marks that met a specific standard based solely on the number of official national (or multinational) trademark registrations. In general, marks that met the GPML criteria would be blocked from use as top level domains by entities other than the trademark owners, and would also be blocked from use as second level registrations (subject to certain exceptions). This would be a reasonably effective start to dealing with the defensive registration problem.

The IRT recommendations, including the GPML, received support from two members of the U.S. House of Representatives, Committee on the Judiciary, who wrote to the President of ICANN, Rod Beckstrom, on September 15, 2009, and asked:

"Which of the recommendations of the IRT does ICANN plan to implement? ...If implemented, how will the recommendations put forth by the IRT serve to reduce or eliminate the need for defensive registrations?"

Beckstrom's reply to this letter asserted that the URS would reduce the incentive for cybersquatters to engage in bad faith registrations and would reduce the perceived power of new gTLDs to charge artificially inflated prices.

When the IRT was convened, ICANN made no promises that its recommendations would be adopted without exception. When DAGv3 appeared in October, 2009, it contained a place holder for Rights Protection Mechanisms, and was accompanied by a chart showing the differences between the IRT recommendations and what appear to be proposals by ICANN staff for the RPMs. The GPML has been dismissed with the following "Comments/Rationale":

"It is difficult to develop uniformly acceptable standards can be developed [sic] - it might lead to the creation of new rights. It would create only marginal benefits because it would only apply to a relatively small number of names."

Whatever the merits of the GPML, it deserves more consideration than this summary dismissal. Making matters worse, the ICANN Board wrote a letter to the GNSO Council on 12 October asking it to present its views on whether the staff recommendations are "consistent with the GNSO's proposed policy on the introduction of new gTLDs and are the appropriate and effective option for achieving the GNSO's stated principles and objectives." This hardly seems consistent with a bottom-up model of policy development in which the GNSO Council has responsibility not for making policy but rather for coordinating its development. Asking the GNSO Council to comment on ICANN staff's recommendations is an end run around what should be a serious debate among the Internet's stakeholders on the GPML.

At another level, the treatment of the GPML is another example of the dangers posed by ICANN's role as the International High Court of Trademark Justice, alluded to above. As ICANN implements those recommendations of the IRT that are supported by its staff, ICANN will move closer to becoming an international quasi-governmental authority. This is not what we set out to do in 1998.

Ideally, the trademark owners of the world, and lawyers, legislators and judges should redouble their efforts to create an international legal structure that takes account of the unique aspects of the Internet's DNS and its uneasy relationship with trademark rights. If we are going to have an International High Court of Trademark Justice, it should be solidly based on law, not on ICANN's ad hoc processes.

By David Maher, Attorney

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Comments

I just have to laugh By John Levine  –  Jan 07, 2010 10:01 am PDT

ICANN has tied itself in knots since the day it was born trying to satisfy the trademark crowd's fear that someone, somewhere, might utter their name without permission, or do something that might cost them money to deal with.  The GPML, aka the Giant Trademark List (GTL), is one of their bad ideas that just won't go away.  Even WIPO declined to try such a thing, and the idea that ICANN has the expertise or credibility to create a GTL is absurd, although it would certainly offer the trademark bar a new income stream advising their clients on the quickest or cheapest way to amass sufficient registrations to get into the GTL.

I am not a big fan of the UDRP, but at least it attempts to apply reasonable principles to the facts of each case rather than being an algorithmically driven vacuum cleaner that maintains a list of words too profane to utter.

Having Trouble Discerning The Thesis By John Berryhill  –  Jan 10, 2010 11:30 am PDT

David,

I'm having some trouble with these two sentences:

"Whatever the merits of the GPML, it deserves more consideration than this summary dismissal."

And…

"If we are going to have an International High Court of Trademark Justice, it should be solidly based on law, not on ICANN's ad hoc processes."

Is your issue that ICANN rejected the GPML, or is your issue that ICANN should be in the business of considering such a proposal in the first instance.

There is no question that "SHELL" and "SUN" are globally protected marks owned by Royal Dutch Shell Petroleum and Sun Microsystems, respectively, and would qualify for any sort of "X registrations in X regions" scheme one wanted to define for a GPML.  There is also no question that the words "SHELL" and "SUN" have primary utility apart from their secondary meaning as trade or service marks. 

Could you explain the "solidly based on law" principle, of any country, under which my ability to use the words "SHELL" or "SUN" is pre-empted by the fact that they are well-known global marks?

Of course, a reference to trademark rights being a priori pre-emptive absent any sort of adjudication (even a preliminary order), rather than remedial, as something "solidly based on law", would itself be a useful thing to have.

Some replies By David Maher  –  Jan 10, 2010 12:44 pm PDT

In reply to John Berryhill, I see two issues. First, I believe ICANN's summary dismissal of the GPML violated ICANN's own procedures. Second, I believe that ICANN has moved into an area of developing law, and it is not suited to that task.

I'm not proposing any particular outcome. It is not a question of the merits (or lack of merits) of the GPML. There is a problem caused by the growth of the Internet as the market for goods and services; I don't see that ICANN's procedures are adequate to deal with this problem. The outcome may be the development of a priori a prioripreemptive rights, or it may be something else. New legal principles may be needed.

In any event, I hope that this will be the beginning of serious debate on the subject.

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