ICANN has opened the comment period Rights Protection Mechanisms (RPM) implemented for both existing and new gTLDs, including but not limited to the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS).
This Preliminary Issue Report is the result of that request.
“The question of who legally has rights to, or is the legitimate holder of, a domain name can be open to dispute. In relation to domain name disputes concerning the registration and use of legally protected trademarks, the Uniform Dispute Resolution Policy (UDRP) is the longest standing alternative dispute resolution procedure”
“As a result of the New gTLD Program, several new rights protection mechanisms (RPMs) were developed to mitigate potential risks and costs to trademark rights holders that could arise in the expansion of the gTLD namespace: the Uniform Rapid Suspension Dispute Resolution Procedure (URS); the Trademark Clearinghouse (TMCH) and the associated availability through the TMCH of Sunrise periods and the Trademark Claims notification service; and the Post-Delegation Dispute Resolution Procedures (PDDRPs).”
The report makes it clear that ICANN may use this as a way to make changes to the UDRP not only on new gTLD’s but on all existing TLD’s including .com
“The report makes it clear that UDRP reform is going to be on the table and well as the addition of NEW RPM meaning its possible that a new procedure in addition to The UDRP and the URS might be recommend.
“The UDRP was created in 1999 to resolve disputes concerning disputes over entitlement to domain names registered at the second level of the DNS. It is an ICANN Consensus Policy that is applicable to all gTLDs, including those launching under the New gTLD Program. The uniform operation of the UDRP is based on two documents: first, the Policy
that sets out its scope, relief, and basis for mandatory administrative proceedings that may be brought within its ambit; and secondly the Rules that set out the procedural requirements that must be followed in such a proceeding.”
“To date the UDRP has not been amended and no complete substantive review of the UDRP has taken place , although
the policy has been adapted to accommodate new malpractices (such as phishing, pay per click and mousetrapping), that
emerged after ICANN’s adoption of the policy in 1999. The UDRP Report concluded that in general the UDRP is functioning well and that there has been well over 30,000 cases decided by experienced UDRP panelists with only “the rarest of the tens of thousands of UDRP decisions successfully challenged in Court.”
“It is noteworthy that a majority of the public comments tothat Preliminary Issue Report requested that the
“UDRP should be untouched.”
However, many commenters also pointed out several ways in which they thought the procedural aspects of the UDRP could be improved while a few commenters believed that the UDRP should indeed be reviewed
A potential Rights Protection Mechanisms Policy Development Process (RPM PDP) would, at a minimum, review the existing RPMs (including the UDRP) and build on the community’s collective experiences of their application, effectiveness and other relevant matters.
It is important to note that the scope, rules and procedures underlying the existing RPMs will remain fully applicable unless a GNSO PDP were to propose amendments to one, some or all of the existing policies(and corresponding rules), or recommends the creation of replacement mechanisms.
The outcomes of a potential RPM PDP Working Group may include:
Developing new or additional RPMs (which could also include recommending the development of new or additional
procedural requirements
Clarifying, amending or overriding existing RPMs (which could include not only situations where particular changes are recommended to a RPM but possibly also scenarios where the PDP does not result in the recommendation of substantive changes to a RPM but rather making certain needed clarifications (e.g. in the applicable language of a RP));
Recommending the supplementing of existing,or the development or new, procedural requirements for any existing RPMs
(which may more appropriately be performed by an Implementation Review Team convened for the purpose, following adoption of the PDP recommendations)
or
Recommending neither substantive nor procedural changes to any existing RPMs, nor the creation of new RPMs””
Here is the preliminary report: http://gnso.icann.org/en/issues/new-gtlds/rpm-prelim-issue-09oct15-en.pdf [PDF, 376 KB]
Staff Paper on Rights Protection Mechanisms in the New gTLD Program: Revised Report [PDF, 2.5 MB], September 2015
The comment period opened yesterday and closes on November 30th
Comments must be submitted by sending an email to: comments-rpm-prelim-issue-09oct15@icann.org
You will get a email that you will have to confirm, if you don’t confirm the email your comment will not be posted.
Thank you for this important reminder
There are some clear cut improvements that could be made:
– If UDRP claim is based on TM, Trademark Clearinghouse SMD file should be required. This could make UDRP cheaper and scaleable; note that the mark doesn’t need to be the same (as it could be a typosquatting case) as the domain registration being challenged, but needs to be the same that is basing the claim.
– URS could be extinguished in favor of a quick-look 1-panelist option; UDRP would then have 3 options: (1) quick-look (2) 1-panelist (3) 3-panelist .
– URS out-of-band procedures, a source of operational problems that is coming to bite the industry sooner or later, will be gone.
Wrong – this confuses the two different processes in a way that was never intended. It would significantly weaken UDRP protections afforded to registrants of non infringing domains.
It would only prevent non-TM holders of filing UDRP based on TM rights; it would not give any deference to TMs besides allowing them to file the UDRP in the first place.
Another rule they could apply to both policies would be if your trademark was registered after the domain was registered then they won’t even hear the complaint. Cira.ca takes this approach in Canada and it saves lots of frivolous rdnh attempts. Everyone knows both udrp and urs systems are a joke and rulings change like the weather. Any changes will probably only make it easier to steal your domains.
That only works for jurisdictions where the date on record is the filing of the trademark; in some jurisdictions, it takes 3 years to get a trademark registered.
After hearing so many good things about Adderall, the thought of drafting ICANN policy makes me want to try it.
Rubens
The TMCH is a mess.
There is so much game playing in the TMCH where companies were allowed to register common words like, the, hot, cool, free and so many more.
needs to be addressed
I would like see UDRP rules amended to specially not to allow a UDRP to be brought by a TM holder where the TM was obtained in the last three years and the domain was registered without change of ownership for the last 5 years or more.
These cases do not have to be heard and result as a class of RNDH decisions.
The gaming is of the TM systems of some jurisdictions, but that can be used in UDRP today with or without TMCH… allowing those registrations to trump others was a design flaw of the Sunrise system, but in UDRP there would be no deference to such registrations: if someone tries to use such TMs, the likely result would be RNDH.
As for how long the TM has been obtained, this is something that would work with USPTO marks but not with some jurisdictions (like INPI) where it takes years for a TM to be issued.
As for time the domain has been registered, would that be an automatic laches criteria ? I find it interesting, although it should only apply beginning that many years from the approval of the policy. And that wouldn’t prevent a panelist before that to apply laches to reach a decision.