As we discussed the other day, ICANN is considering the recommendation of one of its groups to “create a Trademark Clearinghouse and Uniform Rapid Suspension procedure to protect trademarks”
The public comment period ends today , 26 January 2010.
To see all the comments submitted so far, click here.
To make a comment you have to send an e-mail to ICANN at the following address:
Once your comment is received, ICANN will e-mail you acknowledging receipt of the comment. You must confirm your comment by clicking on the link contained in the e-mail or your comment will not be submitted.
Your comment must be received AND confirmed by midnight of the 26th based on your time zone for it to be considered.
Now for the substance of the comment I have to turn to George Kirikos who knows more about ICANN matters from a domainers point of view than anyone on earth except for Phil Corwin who is, as we discussed the other day, without a contract and not filing a response.
Here is Mr. Kirikos response. As always he has graciously offered that anyone can take part, or all of his comments and make them part of your own.
At the very least you need to file a comment saying you just agree and support Mr. Kirikos comments.
Here is the comment filed by George. Again you HAVE to get your comment filed today:
While the latest report of the STI is a step in the right direction, it continues to go beyond the common-denominator international law and overreaches in favour of those making complaints. While my company has no intention to ever register domain names in new gTLDs, it seems that the intent amongst the TM-mafia/cabal is to at some later date apply these same rules to existing gTLDs. Thus, while we don't care about new gTLDs whatsoever, we must comment in order that bad rules aren't implemented that later put at risk legitimate registrants in existing gTLDs. Most TM attorneys share our grave concerns that new gTLDs are a bad idea, and ICANN should not be trying to "divide and conquer" by playing interests off against one another in order to further their own ambitions which the public is against. We stand united with most in the TM community opposing new gTLDs. First off, I'd like to applaud some of the TM lobby for being balanced in their proposals. There are some "good guys" in that group that looked at our past critiques, listened to our concerns, and made appropriate adjustments. They are to be commended. Just as there are "good guys" in the domain registrant community, there are also "good guys" representing the IP interests of brandholders who do not overreach and don't engage in reverse domain name hijacking. However, just as there are cybersquatters, there are also a group in the IP community who would not hesitate to bring forth frivolous claims in order to harass existing registrants and reverse hijack their rightfully owned domain names in order to gain an economic advantage. Both of these "extremists" in the registrant and IP groups need to be reigned in by the rules. In addition to our previously-submitted comments (linked to from above), here are some points we'd like to reiterate: 1. There is no need for a Trademark Clearinghouse that is sanctioned by ICANN. It can clearly be funded and created entirely by the private sector, and does not need to be "sanctioned" or funded in any way by ICANN. In our opinion this will be a great waste of money, and should only be funded by those who are foolish enough to waste their own money (namely TM holders and registry operators) on it. Public money should in no way subsidize it or give it a monopoly position (i.e. there could be multiple competing TM databases). Frankly, it becomes a protection racket that justifies new gTLD operators in having sunrise periods that tax TM holders with registering (and even competing for via auctions) unwanted defensive registrations. The TM Clearinghouse cannot override the courts, wherein TMs are routinely challenged and overturned. "Validation" at the clearinghouse would be gamed by those holding the weakest marks (e.g. trademark trolls), often for the sole purpose of asserting claims on generic descriptive domain names that they would otherwise not be entitled to. The TM Clearinghouse also simply adds a new layer of bureaucracy to the ICANN ecosystem, another set of contractors and consultants who will ultimately tax the public through higher fees, and self-interested lobbying. 2. We find it humourous that no accreditation agreement/contract exists for UDRP providers at present, yet 3.1 recommends exactly that for the TM clearinghouse. First things first --- get the UDRP providers like WIPO and NAF under contract in order to ensure accountability. 3. Of course figurative marks should be excluded from the database. Some commenters want them included, which is ridiculous. The STI got that right, at least. 4. The TM Clearinghouse data should be in the public domain (i.e. there should be bulk access for the public to download it for free, just as they can for the .com zone file), and be available for free to successor TM clearinghouse operators (i.e. no perpetual monopolies). Fees are for things like validation, not for access to a new for-profit monopoly "service" who will try to tax users and the public over time. The most efficient operator(s) would earn "normal" profits via a regular tender process or procurement process, not excess profits through perpetual monopolies and a stranglehold over data they deem "proprietary." An open XML schema and open bulk access process should be created to ensure the public is not held hostage in the future. 5. We do not support mandatory pre-launch use of the TM clearinghouse. Almost every dictionary word, acronym, etc. has some registered TM in some obscure class of goods and services. That does *not* give it exclusivity or a right-of-first refusal over *all* uses worldwide. A registered TM for "example" in Albania should have no weight in blocking "example.newtld" for a good faith registrant in the USA or Canada, or even for a registrant in Albania in a different class of goods and services. We've already seen frivolous registered TMs in the .eu launch, and they were not all from Benelux (i.e. there are a lot of frivolous marks in the US, Canada and elsewhere). 6. In a real sense, ICANN needs to make up its mind whether they want an expansion of the namespace (in which case new registrants are presumed innocent until proven guilty), or simply wants defensive registrations that duplicate existing gTLDs. It's clear registry operators do not care, as long as someone pays the bill for a domain name (i.e. the cybersquatter, the defensive TM registrant, and the good faith registrant are all equal before their eyes). There's a hypocrisy to the sunrise periods that undermines everything ICANN and other new gTLD advocates say, and that hypocrisy is evident to the broader public who does not seek new gTLDs. 7. As per our comments above, 6.1 needs to be modified from "on commercially reasonable terms" to free. The TC operator should have no monopoly whatsoever on the data -- they are simply a contractor for a fixed period, and the data belongs to the public domain. 8. We do not support linkage between the TC and the URS (in 6.2), unless the domain registrant is in the same country/jurisdiction as that of the TM. 9. We oppose the URS in principle, as it will be abused and used to harass legitimate registrants. The better policy would be, as we have suggested multiple times, to have WHOIS verification. This thwarts cybersquatters, who want to hide in the shadows, from registering abusive domain names and thus reduces overall cybersquatting. Many external TM lawyers make money from filing complaints, and do you notice they do not push strongly for WHOIS accuracy (which would reduce complaints significantly). But, TM lawyers within corporations should be in favour of this, as it would reduce their policing costs if there are fewer domains being abused. Verified WHOIS acts as a deterrent to abuse. The URS, on the other hand, tackles the problem after it's too late. Of course ICANN, registries and registrars benefit financially from these abusive registrations through the associated fees, and have no interest in discouraging and preventing abusive registrations through WHOIS verification (which would be very low cost, as we have discussed in previous submissions). They'd prefer to collect the money up front, and impose the costs of the abuse on the wider public, laughing all the way to the bank. I believe the DOC or GAC should step in and mandate Verified WHOIS via a PIN system (i.e. physical letter with a PIN code mailed to registrants to ensure address accuracy before a domain name gets activated). This would please TM holders, consumers, and legitimate domain registrants who always maintain accurate WHOIS. 10. The "Safe Harbors" in the URS should include the words "without limitation", to ensure that they can grow over time. The policy is flawed because URS providers have a financial incentive to expand the definition of "abuse" over time, but registrants should have that same power to check that growth through their own examples of good faith usage. 11. In order to ensure that there is no forum shopping, the URS provider should be selected by the *registrant* (or alternatively the registrar), not by the complainant. If one studies the history of the UDRP, this was a very early proposal that in hindsight made a lot of sense, given the problems we've seen with WIPO, NAF and CAC engaged in a "race to the bottom" to appeal to TM holders. By shifting the balance so that it is the *registrant* who selects which URS provider handles a case, the playing field is made more level. If the registrant does not select a provider, a case would be randomized between multiple providers and panels. 12. There should be notice made to attorneys of the domain registrants, whose legal contact data would appear in the public WHOIS on an opt-in basis. This would increase the odds of *actual notice* of complaints, as the attorney might receive notice when a registrant is on holiday, and act accordingly. 13. Domain locking/freezing should be done by the *registrar*, NOT the registry operator. This would allow the registrar to also contact their client, to improve the odds of actual notice. 14. 20 days is insufficient notice, especially for domains that have been registered for long periods. The notice period should be a formula based on the age (from creation date) of the domain name. For a 10-year old domain name, for example, where there is no "emergency" requiring the URS and the TM holder has slept on their rights, the notice period might be 6 months, for example. For a freshly registered 2 month old domain name, 20 days might be considered adequate. Alternatively, the URS should not apply at all to domains older than a certain age, for example a cut-off of 2 years past the creation date. In the real world, if I had a "McDonald's" sign over my door for 10 years, and McDonald's tried to get an emergency injunction (which is kind of what the URS is like) to have it torn down, the judge would deny it, and instead set the matter for normal trial. McDonald's would have faced the issue of laches, having slept on their rights. By using a formula like that suggested above, it encourages complaints to be brought promptly, and that they are not used as a tool to harass long-term good faith registrants. In the real world there are statutes of limitations on bringing actions, and this change would be in line with the real world precedent. Indeed, not having a limitation period would create the absurdity that a URS/UDRP provider could find in favour of a complaint that would be *statute-barred* from the court system! 15. URS providers and panelists, as in the UDRP, should not be excluded from liability in real courts if there is deliberate wrongdoing. 16. The domain name should not be transferred to the complainant after a successful complaint unless the registrant has ample time (say 6 months) to launch an appeal in court. 17. Any complainant losing a URS should be precluded from getting a second "kick at the can" via UDRP for a period of 2 years for the same domain name. They can instead use the court system if they lose. 18. Point 8.2 is very wrong, namely an appeal by the registrant in real court to overturn the URS should immediately restore the nameservers to those specified by the complainant. Real court trumps URS. That appeal should be permitted at any time, including during the time before a URS response is required. The registry and registrar need to obey the court in restoring the nameservers, otherwise innocent registrants would have income-generating websites disrupted by bad decisions from URS providers. 19. The penalties for abuse by TM holders are trivial. They need to be made substantially stronger. In Canada, there are financial penalties under the CDRP (.ca version of UDRP) which provides for a bad faith complainant paying up to $5000 (as ordered by a panel): http://www.cira.ca/assets/Documents/CDRPpolicy.pdfÂ; (section 4.6) to respondent to cover the costs of the registrant. That represents a fair and balanced policy, and reduces frivolous complaints. Alternatively, complainants should post a security bond. 20. All URS decisions need to be made public, just as in the UDRP, in order to ensure that the public can scrutinize whether panelists and URS providers are following the rules. They should be available via a XML interface, in addition to plain text/HTML as they are now, so that researchers can have bulk access to the XML for scholarly and academic studies (as we've also suggested for the UDRP). 21. Registrants should be able to white-list themselves to opt-out of the URS (and UDRP) through mechanisms such as WHOIS verification, or posting of security bonds with their registrars. The "good guys" want to stand out from the bad guys, however ICANN and the TM mafia wants to treat all registrants as though they are all cybersquatters. 22. The Business Constituency has been captured by the TM lobby, and no longer represents true businesses (that's one of the reasons we've left it, as well as their new totalitarian charter). Their "minority report" should be disregarded, and not interpreted as representing the views of legitimate business registrants. 23. In Appendix 6, the points in 1.2 (page 44) are described as "non-exhaustive". This is flawed, just as in the UDRP, and encourages URS providers and panelists to have an ever-expanding definition of "bad faith" in order to promote themselves and or their provider amongst complainants. It's the reason we see some ridiculous decisions coming from UDRP providers who seek to stretch and change and literally break the rules in order to encourage more complaints, thereby bringing them more money. This needs to stop. The way to do this is to define clear what the *actual* clear-cut circumstances are, and make them exhaustive and unchanging (unless changed via PDP). Panel members have made themselves into rule-makers, instead of being those who *apply* the rules, and this is simply wrong. As we mentioned above, the "Safe Harbors" must balance 1.2, and should be non-exhaustive. Only the clearest-cut obvious cases should win a URS or UDRP, not a 51% to 49% "probability" based model. Most of us in good faith can view the list of upcoming UDRP cases and *know* which ones are slam dunks, and are indefensible. It's these ones that should be "assembly line" cases. But, there are many others, generic dictionary words, acronymns, abbreviations, etc. where panelists have taken it upon themselves to make up new law as they go along, to please Complainants and encourage additional complaints. 24. There are huge conflicts of interests in allowing panelists to also represent complainants/respondents. Panelists should be precluded to ever represent others (i.e. in other domain disputes). You can see more on this in the comments to the article at: http://domainnamewire.com/2009/12/28/2009-domain-dunce-award-panelist-andrew-f-christie/ In particular, there was a US Supreme Court decision this year, Caperton v. Massey, where the court created a new standard requiring requiring judges to recuse themselves if there is a âprobability of biasâ. See: http://www.supremecourtus.gov/opinions/08pdf/08-22.pdf I believe this principle might be useful to disqualify some UDRP panelists. 25. Panelists need to be reminded that "evidence" is not the same as "proof" --- some don't seem to get it, and simply "check the boxes" on evidence without weighing it! (see the comments in the DomainNameWire article for more on that) In conclusion, the bad policy decision of going forward with new gTLDs against the wishes of the public cannot be fixed by implementing bad policies such as the IRT or its step-child the STI. ICANN needs to recognize that the proper course is to maintain the stability that we have today, and only add additional new gTLDs if their benefits exceed their costs. It's laughable to watch the posturing of those trying to "sell" new gTLDs as desirable, and those who change their principles on a dime because they see potential short-term gain. ICANN should be in the business of refining *long-term* principles that are broadly supported by the public, not playing constituencies and groups against each other in order to further their own self-interest in becoming a $200 million/year organization that taxes internet users to fund world travel, African safaris, and extravagant parties. Furthermore, the STI would be considered "policy". Under the Affirmation of Commitments: http://www.icann.org/en/documents/affirmation-of-commitments-30sep09-en.htm "To ensure that its decisions are in the public interest, and not just the interests of a particular set of stakeholders, ICANN commits to perform and publish analyses of the positive and negative effects of its decisions on the public, including any financial impact on the public, and the positive or negative impact (if any) on the systemic security, stability and resiliency of the DNS." Where is the list of "negative effects" published by ICANN or the GSNO, and an economic valuation of the financial size of the positive vs. the negative effects to determine whether the benefits exceed the costs of the STI/IRT? We've basically had a process where a bunch of lawyers got together, without any economists at the table to perform financial analysis or provide a reality check on what they are talking about. This is a pure violation of the AOC, the lack of attention paid to the requirements to serve the public interest *AND* to analyze the positive and negative financial impacts. On that basis alone, the STI should be rejected as "not finished" and should be sent back for consideration using the expertise of those who are not lawyers. Sincerely, George Kirikos http://www.leap.com/