The ICA Comments on ICANN Preliminary Issue Report on IGOs and INGOs

Phil Corwin of the ICA has sent a comment to ICANN regarding the Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS.

In that report, the staff recommended the GNSO Council initiate a PDP (Policy Development Process) to see if they should modify the UDRP and URS process so that IGOs and INGOs could access these as to basically go after their acronyms at the sld level. This could subject legitimate domain owners to having to engage in a legal battle to keep a domain that is an acronym for an Intergovernmental Organization.

The ICA wrote back in December,

Yesterday ICA filed a letter that generally supported the GNSO Council’s recent and unanimously adopted Resolution on Protections for International Governmental and Non-Governmental Organizations (IGOs & INGOs). In particular, while supporting strong protections for exact matches of their full names at the top and second level of the DNS, we were pleased that the Resolution did not grant undue protections to acronyms of their names, and did not put existing acronyms at incumbent gTLDs at unreasonable risk.

But it turns out that ICA was the only organization to file a supportive comment in the initial comment round (the reply period is now open until January 8th) – and that the UN has coordinated a flood of letters (found at http://forum.icann.org/lists/comments-igo-ingo-recommendations-27nov13/), all protesting that the Resolution does not go far enough to protect those acronyms. Besides the UN, such organizations as NATO, WIPO (which is a UN agency), and Interpol say it doesn’t do enough to prevent potential misuse of those acronyms, especially at new gTLDs.

ICA last weighed in on this issue in mid-October (see http://internetcommerce.org/IGO%2526INGO) when we noted that some proposals would go so far as barring the registration of common acronyms such as idea, eco, imo, iso, and au, as well as adversely affecting their existing counterparts at incumbent gTLDs. We proposed a more reasonable approach that is in many ways reflected in the GNSO-adopted resolution.

But that doesn’t begin to go far enough for the UN and the IGOs and INGOs it has rallied to its cause. Indeed, their position takes a harder line than ICANN’s own Governmental Advisory Committee (GAC). The GAC’s Buenos Aires Communique (https://gacweb.icann.org/download/attachments/27132037/FINAL_Buenos_Aires_GAC_Communique_20131120.pdf?version=1&modificationDate=1385055905332&api=v2) addressed this issue by requesting a dialogue with the New gTLD program Committee (NGPC) on a final modality for permanent protection of IGO acronyms at the second level, through a notification system that would allow for timely intervention to prevent misuse and confusion through a no or nominal cost system that provided for a final binding determination by a third party. That’s fairly consistent with ICA’s position, as we have no objection to allowing IGOs and INGOs to make use of the UDRP and URS, although we have reservations about placing their exact names in the Trademark Clearinghouse (TMCH) database until changes are made in the Trademark Claims Notice generated by attempts to register matches – and we don’t support placing their acronyms in the TMCH.

Regardless of the legal or technical merits, the mass of comment filings against the GNSO Resolution has just converted this into yet another politically charged hot potato that needs to be resolved by the ICANN Board. Will the GAC now take on a tougher stance under pressure from these IGOs and INGOs? And, in an approaching year when the debate between the choice of a multistakeholder versus a multilateral model of Internet governance will take center stage at the spring Sao Paulo meeting and the fall ITU session, how will the ICANN Board balance considerations of defending the unanimous multistakeholder position of the GNSO Council versus the need to garner multilateral support for ICANN itself?

In their letter to ICANN back in October, the ICA was clear to point out that many of these acronyms are valuable domains, that the registrants have legitimate rights to the names and that there is no infringing or confusion with any IGO or INGO mark.

Here is the December letter:

Re: Protection of IGO and INGO Identifiers in All gTLDs (PDP) Recommendations for Board Consideration

 Dear ICANN:

I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.

This letter addresses the “Protection of IGO and INGO Identifiers in All gTLDs (PDP) Recommendations for Board Consideration”   posted for public comment on November 27th[1]. We are specifically commenting upon the Resolution[2] unanimously adopted by the GNSO Council on November 20th when it approved the consensus recommendations of the IGO-INGO PDP Working Group. Following this comment period those recommendations will be considered by the ICANN Board.

Executive Summary

The ICA is generally supportive of the Resolution adopted by the GNSO Council – with the exception of certain recommendations relating to the inclusion of exact matches and acronyms in the Trademark Clearinghouse database.

We are also gratified that the recommendations do not adopt a hostile position toward acronyms of the encompassed organizations that are registered at the second level of existing gTLDs.

Discussion

The ICA filed comments[3] on October 11, 2013 in regard to the Draft Final Report on Protection of IGO and INGO Identifiers in All gTLDs.

The positions we took in that prior comment letter can be summarized follows:

  • In regard to the top level of new gTLDs, we generally favor full protection for exact matches of the full name of all the IGOs and INGOs addressed by the Report by barring their registration by third parties — but we oppose such blanket, registration-blocking  protection of exact matches of their acronyms.
  • In regard to the second level of new gTLDs, we generally favor full protection through registration blocking for exact matches of the full name of all IGOs and INGOs addressed by the Report  — but we oppose blanket protection of exact matches of their acronyms as any misuse could be addressed by existing second level dispute resolution arbitration procedures.
  • In regard to the Trademark Clearinghouse (TMCH), which is only relevant to new gTLDs — we would support inclusion in the TMCH of exact matches of the full name of all the IGOs and INGOs addressed by the Report – but only if the Trademark Notice generated by an attempt to register such a name differentiates between trademark rights and the “rights” held in such name by an IGO or INGO that has not trademarked its name.
  • We oppose inclusion in the TMCH of the exact matches of acronyms of all the IGOs and INGOs addressed by the Report. We do not oppose allowing affected organizations to utilize the curative rights of the UDRP (at new or incumbent gTLDs) or URS (only available at new gTLDs at this time) dispute resolution arbitration mechanisms if they believe that a particular domain using such exact match has been registered and used in bad faith; that is, in such a manner as to deceive and mislead the public that the particular website is being operated by or has been endorsed by the relevant IGO or INGO.

    Finally, in regard to any incumbent gTLD, while we appreciate and support the Recommendation that any currently  registered domain matching a protected IGO or INGO identifier “shall be handled like any existing registered name within the incumbent gTLD regarding renewals, transfers, sale, change of registrant, etc.”, we strongly oppose the adoption of any policy that would:

  • Define or create a mechanism against the specious and completely speculative possibility of “front-running” of domain registrations of IGO or INGO identifiers.
  • Exclude such a domain from any add/drop activities by the registrar in the event it becomes eligible for deletion, or make such deleted domains ineligible for future re-registration.
  • In any way sanction the involuntary seizure or deletion of any identifier exact match acronym domain that is registered now or may be in the future at any incumbent gTLD.

    When we compare our previously stated positions with the recommendations that were unanimously adopted by the GNSO Council, we:

  • Support the recommendation for protection of the Red Cross/Red Crescent (RCRC) at the top and second level – with the exception of including full names and acronyms in the TMCH database.
  • Support the recommendations for protection of the International Olympic Committee (IOC) at the top and second level.
  • Support the recommendations for protection of International Governmental Organizations (IGOs) at the top and second level – with the exception of including their acronyms in the TMCH database.
  • Support the recommendations for protection of International Non-Governmental Organizations (INGOs) at the top and second level – with the exception of including exact matches of their full names in the TMCH database.
  • We support the recommendation that, at the top level, acronyms of the RCRC, IOC, IGOs and INGOs shall not be considered as “Strings Ineligible for Delegation”; and at the second level, acronyms of the RCRC, IOC, IGOs and INGO under consideration in this PDP shall not be withheld from registration.
  • We do not oppose the recommendations applicable to existing gTLD registries that they shall accommodate similar protections at the second level for the exact match, full name of the RCRC, IOC, IGOs, and INGOs – and are gratified that these protections do not apply to acronyms.
  • We support the initiation of an Issue Report to consider the amendment of existing policies “so that curative rights of the UDRP and URS can be used by those organizations that are granted protections based on their identified designations” as a preceding step to a Policy Development Procedure (PDP) on this issue – so long as the Issue Report fully considers the perspective of the domain investment community.
  • We have no objection to the establishment of “an IGO-INGO Implementation Review Team (IRT) to assist ICANN staff in developing the implementation details relating to the recommendations adopted herein should they be approved by the ICANN Board” — but strongly urge that any such IRT should include qualified members or representatives of the domain investment community so that their expertise can contribute to fully informed consideration of reasonable and effective implementation steps.

    Further explaining our position in regard to the inclusion of full names and acronyms in the TMCH database, we can only support inclusion of full names of the encompassed organizations in its database if the currently flawed Trademark Claims Notice is amended to differentiate between trademark rights and the “rights” held in such name by an IGO or INGO that has not trademarked its name. We oppose the inclusion of non-trademarked acronyms as the TMCH is supposed to be a reliable database of high quality trademarks. The issue of making the UDRP and URS available for non-trademarked acronyms can be addressed in the Issue Report referenced above.

    Conclusion

    We hope that ICANN finds our views on this matter to be useful and informative. We look forward to contributing to the Issue Report, PDP, and IRT referenced above.

In addition to the ICA, George Kirikos left a comment expressing his oppostion to the latest report. You can read his comments along with those of a few others here

The link to the ICA pdf is located on their comment for your complete review.

Phil Corwin Of ICA Appointed To Internet Committee of the International Trademark Association (INTA)

Phil Corwin of the Internet Commerce Association (ICA) has been appointed to the serve on the Internet Committee of the International Trademark Association (INTA) for a two-year term commencing in January 2014

International Trademark Association (INTA) is the largest group of its kind.

Mr. Corwin stated:

“This will allow me to bring the perspective of domain registrants and others into the Committee’s consideration of trademark policy on the Internet Committee for the next two years!”

This year, more than 3,200 members applied to serve on INTA committees so its quite a honor for Mr. Corwin and a great opportunity for domain holder issues to be heard in the largest organization of trademark holders and their lawyers

Internet Committee of INTA oversees some subcommittees including:

Online Use Subcommittee
Domain Disputes, Ownership and Whois Subcommittee
New gTLD Registry Issues Subcommittee
International Domain Name Issues
Governance Subcommittee

Current members of the Committee include

Fabricio Vayra Committee Vice Chair
Time Warner Inc

Andrew Abrams
Google

Thomas Barrett
Encirca

Paul D. McGrady
Winston & Strawn LLP

David Taylor
Hogan Lovells (Paris) LLP

There are 25 total members from around the world.

Its a pretty amazing accomplishment for Phil and a great sounding board for domain holders to get their issues heard among the biggest brands  in their world and their counsel.
As part of Mr. Corwin’s appoint he will be required to attend two meetings a year in addition to the ICANN meetings that Mr. Corwin already represents the ICA at each year.

Needless to say your contributions to the ICA are needed more than ever.

If you think the new gTLD’s and rules coming out of the program won’t effect you or your current domain holdings you should read the excellent piece on DirectNavigation.com today on how new gTLD rules, in this case the hundreds of domains that can’t be registered in new gTLD may come block to exist exact matching existing domains including .com domains.

The list includes lots of two and three letter domains.

Congrats to Phil

 

CADNA: Costs Of Defensive New gTLD Registrations To Be Double The Total Cost Of All .Com Registrations

As pointed out by the Phil Corwin of the Internet Commerce Association (ICA) The Coalition Against Domain Name Abuse (CADNA) has launched another offensive at the new gTLD program teaming up with the Council of Better Business Bureaus (BBB) to launch a month-long “‘Know Your Net’ gTLD public awareness campaign”

“Their goal is to enact amendments to the U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) that would expand the law’s coverage beyond domain registrants by creating secondary liability for domain system intermediaries like registries and registrars, increase statutory damages penalties for all targets, and establish a ‘loser pays’ regime that favors deep-pocket corporate litigants. If such a proposal was enacted it would vastly increase the litigation leverage of trademark owners and tilt the playing field against defendants in a manner that would result in a high probability of domain shutdown without any final verdict from a court. In short, it’s a SOPA-like proposal grounded in trademark rather than copyright.”

CADNA has claimed that defensive registration costs to brand holder will cost $2.4 Billion dollars

“If businesses register as aggressively [as they did at the .XXX adult content TLD] in all of the new ‘open’ gTLDs, they will be forced to spend almost $10 billion….“Domain name registrations in the new gTLDs likely will be lower than they where (sic) in .XXX. But even a quarter of the .XXX number of registrations would cost about $2.4 billion

The ICA counters that CADNA is basically claiming that the total cost of defensive domain name registration will be double the total cost of the cost of owning every .com and .net in the registry.

According to the most recent April 2013 VeriSign Domain Name Industry Brief there were 252 million registered domains at the end of 2012, of which about half (121 million) were in .Com or .Net. The average annual registration fee for a .Com or .Net domain is less than $10 – but let’s go high and assume that the average annual fee for all .com and .net’s are $10, they the total amount spent on all .com and .net registrations is around $1.2 Billion.

How can defensive registrations cost brand holders twice as much money as the total registration cost of the new .com and .net registry combined?

Of course there are a lot of other issues with the CADNA numbers.

To use .XXX as an example which had a retail registration fee of $100 and a had a high degree of defensive registrations due to the nature of the subject matter, we at TheDomains.com would expect only .sucks which is only one of 1,400 or so new gTLD strings to generate the amount of defensive registrations that .XXX saw.

We applaud the ICA for keeping an eye on trademark holders claims and the numbers.

We are watching too.

ICANN Declares Initial Evaluation Of New gTLD’s Over But There Are 29 To Go Including .Search & .ABC

In a press release this afternoon ICANN proudly announced that the “Initial Evaluation (IE) phase of the new generic Top-Level Domains (gTLD) program is concluded.”

“This is an extraordinary landmark which demonstrates the progress in this program,” said Akram Atallah, President of ICANN’s Generic Domains Division. “We are looking forward to the innovations that these new introductions will enable on the Internet.”

“Out of the 1,930 new gTLD applications submitted, a total of 1,745 applications passed Initial Evaluation, 32 have gone into Extended Evaluation, and 121 were withdrawn from the program. ”

The only problem is there are still 29 new gTLD applications showing as still being in Initial Evaluation on ICANN’s website.  These 29 applications are not withdrawn, have not passed IE, have no failed and have not been made eligible for extended evaluation.

The fate of those 29 applications is still unknown and there are some “big” applications still in the Initial Evaluation status including Google’s much talked about application for .Search; the American Broadcasting Company’s application for .ABC; and The Better Business Bureau’s application for .bbb;  the city of Rome’s application .Roma; the global accounting firm of Deloitte Touche Tohmatsu application for .Deloitte; the only other applicant for .Sex filed by Internet Marketing Solutions Limited, other than ICM Registry’s, the operator of .XXX; Rogers Communications application for .Rogers and another application that has gotten some mainstream press,  .Kosher.

Here are the 29 applications that are still in IE:

49 深圳 Guangzhou YU Wei Information Technology Co., Ltd.
63 佛山 Guangzhou YU Wei Information Technology Co., Ltd.
104 广州 Guangzhou YU Wei Information Technology Co., Ltd.
230 BAR Punto 2012 Sociedad Anonima Promotora de Inversion de Capital Variable
629 TATA[8] TATA SONS LIMITED
721 TUI[8] TUI AG
786 ROMA Top Level Domain Holdings Limited
869 BOSTIK Bostik SA
870 TOTAL Total SA
1033 JIO Affinity Names, Inc.
1276 BOEHRINGER Boehringer Ingelheim Pharma GmbH & Co. KG
1280 PWC PricewaterhouseCoopers LLP 
1329 DELOITTE Deloitte Touche Tohmatsu
1440 LPLFINANCIAL LPL Holdings, Inc.
1455 BBB Council of Better Business Bureaus, Inc.
1632 ABBVIE Abbott Laboratories
1665 SEX Internet Marketing Solutions Limited
1725 LECLERC A.C.D. LEC Association des Centres Distributeurs Edouard Leclerc
1777 KOSHER Kosher Marketing Assets LLC
1781 LAMER ELC Online Inc.
1789 ABC American Broadcasting Companies, Inc.
1807 SEARCH Charleston Road Registry Inc.
1808 ROGERS Rogers Communications Partnership
1824 FIDO Rogers Communications Partnership
1842 AQUITAINE Région d’Aquitaine
1850 BANQUE GEXBAN SAS
1868 ADAC Allgemeiner Deutscher Automobil-Club e.V. (ADAC)
1869 MMA MMA IARD
1889 FAGE FAGE Luxembourg S.à r.l.

 

The ICA Forces ICANN To Issue A “Status Report on UDRP/URS Providers & Uniformity of Process”

ICANN issued a Status Report on UDRP Providers and Uniformity of Process, last night and the timing of it makes it look as a direct result of the criticism of Phil Corwin of the Internet Commerce Association (ICA) made public during the ICANN meeting that concluded on Thursday.

First for the report, then some comments will follow:

“”Issues relating to Uniform Domain Name Dispute Resolution Policy (“UDRP”) and uniformity of providers started to arise within ICANN in 2010. Commenters raised concerns regarding how ICANN can and should enforce uniformity among the approved UDRP providers. At that time, ICANN stated that it would undertake a review of its relationship with its UDRP providers, which it did. This memo is the culmination of that effort.

“”There are two documents that are required for universal, uniform operation of the UDRP. The first is the policy itself, at http://www.icann.org/en/dndr/udrp/policy.htm (“Policy”), setting out the scope of relief and the basis for mandatory administrative hearings that may be brought.

The second document set outs the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), at http://www.icann.org/en/dndr/udrp/uniform- rules.htm, which provide the baseline procedural requirements that must be followed in a UDRP proceeding, such as required notice to a respondent, time for filing a response, and standardization of a practice for appointing the administrative panel in every proceeding brought under the UDRP.

Each approved UDRP provider is responsible for maintaining its own set of supplemental rules, defined as “the rules adopted by the Provider administering a proceeding to supplement these Rules.

Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets.” (Defined in the Rules, at http://www.icann.org/dndr/udrp/uniform-rules.htm.)

As part of the approval process, potential providers must provide ICANN with a copy of their proposed supplemental rules, which are reviewed to confirm that there is no conflict with the Rules and the Policy, and also to confirm that the potential provider has an understanding of the policy.

Contracting with UDRP Providers

One of the most common requests that ICANN has received regarding UDRP providers is to implement a contract across providers that will require uniformity in proceedings.

ICANN has carefully considered whether the introduction of contracts is feasible or useful in the scope of UDRP proceedings, and has determined that contracts would be a cumbersome tool to assert to reach the same outcome that exists today. Just as UDRP providers are approved by ICANN, ICANN can always revoke its approval if a provider is found to no longer meet the standards that supported its approval.

For example, if a UDRP provider is found to be acting in violation of the UDRP, or if the provider has Supplemental Rules that are in conflict with the UDRP and the Rules, and the UDRP provider failed to remedy that conflict, there is nothing in either of those situations that precludes ICANN from revoking approval.

Imposing a contractual relationship could actually make it more difficult for ICANN to take corrective action. Here, the UDRP and the Rules set forth all of the expected actions of the UDRP provider; a contract would only be repetitive in this case.

Although some have argued otherwise, the situation with the UDRP is different from the Uniform Rapid Suspension System (URS) that has been established for the New gTLD Program.

Unlike the UDRP, the URS is not based on a policy.

ICANN has used Memoranda of Understanding to govern the relationship with each of the selected URS providers, in which each of the URS providers agree to implement the URS services in accordance with the procedures laid out in the Applicant Guidebook, as they might be amended from time to time.

The URS providers also agree to maintain supplemental rules that “may not contravene or be inconsistent with the URS Procedure or URS Rules.” (See http://newgtlds.icann.org/en/applicants/urs for more information on URS providers.) These are the same requirements that UDRP providers are subject to, without a contractual relationship.

 

Forum Shopping and Provider Concerns

 

A frequent concerns raised regarding UDRP providers is the potential for “forum shopping,” or that UDRP complainants will seek out providers that they believe will provide a better result.

The provision of contracts, however, will not stop complainants from filing UDRP disputes with their preferred providers.

In fact, one of the expected benefits of the diversity of UDRP providers is to provide further choice to all who may invoke the UDRP, including issues of geography and language.

UDRP providers are expected to perform to the standards set forth in the UDRP.

So long as those standards are used, and the provider is adhering to the UDRP, the choice is appropriate to leave to a complainant as to which UDRP provider it wishes to use.

Many of the concerns raised about the uniformity of UDRP providers are based on the premise that there are UDRP providers today that act outside of the UDRP.

However, the few reports or complaints that ICANN has received regarding existing UDRP providers have not evidenced behavior that would require ICANN to consider whether there was a need to revoke its approval.

Of course, there is always the future possibility that an issue of non-compliance will arise that will require corrective action.

In recognition of that potential, ICANN commits that substantiated reports of UDRP provider non-compliance with the UDRP or the Rules will be investigated.

If the investigations uncover issues of UDRP provider non- compliance, ICANN will work with the affected UDRP provider to determine if the issue can be remedied. If the issue cannot be remedied, and the UDRP provider cannot – or refuses – to return to acting in conformity with the UDRP, ICANN will take action, which might include revocation of its approval of the UDRP provider, taking into account issues relating to the transferring or completion of pending matters before that provider.

 

Provider Approval Process

The work related to the approval of UDRP providers is not solely within the control of ICANN staff and Board.

At the time the UDRP was implemented, there was an indication that “The Generic Names Supporting Organization (GNSO) is currently undertaking a review of the UDRP, and will include the approval process for dispute-resolution providers as part of this review.” See http://www.icann.org/en/dndr/udrp/provider-approval-process.htm.

In the interim, 10 required elements for applications were set forth on that approval process page.

In 2003, the GNSO conducted a survey to prioritize issues relating to the UDRP, as seen in a UDRP Issue table, and raised the issue of “[s]hould standards for accrediting providers and panelists be promulgated?”.

This issue was ranked fourth in level of import, and there is no further mention of the issue available on the GNSO Issues page.

As a result, the Approval process listed as “provisional” in 2000 has remained in effect.

This issue was re-raised within the documentation for a policy development process regarding the UDRP that was before the GNSO Council in 2011, and could be included within the continuation of that PDP when the work is reinitiated after new gTLDs are delegated into the root.

Summary

UDRP providers are central to the maintenance of one of the policies that is most central to rights protection within gTLDs, the Uniform Domain Name Dispute Resolution

Policy. UDRP providers are expected to adhere to all portions of the policy – and it is important for ICANN to know if they are not doing so.

However, a contractual regime is not required for ICANN to have enforcement power over the UDRP providers; the established UDRP and Rules set out the parameters of the UDRP providers’ conduct, and they may not act in contravention of the Policy or Rules.

While there has not been, to date, a need for ICANN to revoke its approval of any UDRP provider, the concerns raised in the community make clear that ICANN has to be prepared for this potential.

As a result, ICANN is committed to thoroughly investigate complaints of non-compliance and take corrective action as appropriate.

 

So ICANN is saying they don’t have contracts with UDRP or URS providers nor do they need one.

Seems like process which for UDRP is being used thousands of times a year to take property away from property holders should be subject to some contractual relationship and the upcoming URS which is much scarier for domain holders should require a contract between ICANN and the providers.

Why is ICANN making new gTLD registries sign contracts, why not just refer them to a list of guidelines with the thought that there registry could be suspended if they violate the terms of the registry guidelines?

For an organization that pushes a LOT of paper, its about the only issue involving ICANN that is not heavily contracted.

On the issue of provider Approval process ICANN refers to two documents a GNSO survery taken 10 years ago and an “approval; proceess:” which is 13 years old.

Really?

Since then there have been tens of thousands of UDRP decisions and providers added and anyone that reads thedomains.com on a regular basis know there are bad decisions, overreaching panelist  and worse highly inconsistent decisions.

The inconsistent decisions is one of the major reasons fro forum shopping and several of the providers didn’t even exist 10 years ago when the last survey was taken

Maybe its time for a new survey guys.