WRG New gTLD Conf-2 Presntn DonMoody 20130925 (Final)

8/13/2019 WRG New gTLD Conf-2 Presntn DonMoody 20130925 (Final)

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Enforcement Procedures To ProtectTrademark Rights, Community and OtherInterests In New gTLD Environment

Don C. Moody, J.D., M.S.

New gTLD Disputes

New gTLD Disputes 2013


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Ground RulesPresentation timeframe:

~30-40 minutes + ~10-15 mins Q&A (if needed). Will strivefor few minutes extra break time for java or to cut a.m. emailload down to small avalanche

Disclaimer:

Examples that concern (or in any way implicate) actualapplied-for strings are purely for information purposes,especially if object ions or GAC advice current ly pending!

No attempt to single out or debate the merits of any currentpending TLD application. Not appropriate forum.

This presentation is geared toward post-delegationprotective measures (whereas objections, GAC advice, etc.are pre-delegation).


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More Ground Rules

Alsovery important rule!

Under no circumstances will the phrase

dispute resolution policy ever be referred

to as a DERP

According to the widely-respected legal

authority I CAN HAZ CHEEZEBURGER

derp is:

[A]n expression associated with stupidity,much like the earlier forms of

interjections like duh and dur.

While some may tacitly agree with the applicabilityof this definition in light of how certain objectionshave been handled thus far, but for the most partwe will stick solely to D-R-P as in U-D-R-P.


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OK alreadywhat will we be talking about?

What post-delegation protection

mechanisms appl icantsmay need toknow about

What post-delegation mechanisms

non-appl icantswith interests to

protect (i.e. trademark/IP owners,

communities, etc.) may need to know

about

Discussion will include not only post-

delegation counterparts to pre-

delegation objection procedures (e.g.

LRO or community objections) but also

touch on new uses of old tools (e.g. theUDRP, court litigation) in new gTLD context.


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Mechanisms for Challenging Registry

Activities (post-delegation)

Post-Delegation Dispute Resolut ion Procedure-TM (PDDDP)

Purpose: Address infringing behavior by TLD regis try

(not second-level regis trantsdoes not replace UDRP)

Dispute Providers: WIPO, NAF and ADNDRC.

Burden of Proof: Explicit standard for burden of proof: objectormust prove case by clear and con vinc ing evidence(CC&E)

Standing: Holders of nationally (e.g. USPTO)

or regionally (e.g. Benelux) registered or unregistered

marks validated through court proceedings (similar to TMCH).

Pleadings: Substantive portion 5,000 words or 20 pages max

(like pre-delegation objections).


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Post-Delegation Dispute Resolution Procedure-TMOther Aspects:

Panelists: Like LRO, single panelist by default, but (New!) now any oneparty canrequest three (3) member panel (as opposed to both sides needing to agree).

Default: (New!) Setting aside default now possible with good cause showing.

Threshold Review: (New!) In addition to administrative review by dispute provider to

ensure formatting compliance (e..g complaint


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Why Are 3-Member Panels Useful?(whether domain name disputes or any commercial arbitration?

Hypothetical Panel #1:

Or

Fred, Lawyer

extraordinaire

Justice OConnor Justice Marshall



Or

Justice OConnor

**I can make fun of lawyers because I am

one. Comes free with Bar card.

Fred, Lawyer

extraordinaire


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Whats Actionable Under PDDRP-TM?

Either:

1. Infringing Conduct by registry itself at top-level that takes unfair advantage or

impairs the marks distinctive character or reputation or creates a likelihood of

confusion with the mark. Similar to LRO standard.

or

2. Infringing Conduct by registry itself at second-levelwhere there is (i) a substantial

pat tern or pract iceof specific bad faith intentto prof i tfrom the saleof trademark

infringing domain names; or (ii) a bad faith intent to profit from systematic

registration of infringing names that take unfair advantage or impairs the marks

distinctive character or reputation or create likelihood of confusion, etc.

Note: The PPDRP-TM specifically advises that a registrys mere knowledge (actual or

constructive) that infringing names existwithin the TLD is not enough. There must be some

form of affi rmat ive conduc tshowing bad faith intent. See PPDRP at pg. 3.

Post-Delegation Dispute Resolution Procedure-TM


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An yth ing we can take from LROs (e.g. Comp lainant-v.-Registry precedent)?

Yesa lot of objectors lost!! (e.g. prior restraint aspect)

A few oft-cited decisions:

Defender Direct v. Right At Home (see also.MUSIC LRO cases): Obtaining a

trademark in a first-to-register IP jurisdiction where circumstances show no (or de

minimis) actual use in commerce solely to gain standing for an objection and game

the system is not permitted.

Express, Inc. v. Sea Sunset, LLC (Donuts): If a partys trademark consists

solely/primarily of generic/dictionary terms, this typically cannot be used to support

a pre-delegationobjection remedy (i.e. denial of the application) as it amounts to a

de facto prior restra inton speech. Markholder that chose such a mark voluntarily

assumed risk that other may make fair use of such a common term in language.

Post-delegationconduct by a registry (i.e. resulting in measurable harm) likely tobe looked on more favorably by panels as now not relying solely on conjecture.

Post-Delegation Dispute Resolution Procedure-TM


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Mechanisms for Challenging Community-

Based Applications (post-delegation)

Registry Restriction Dispute Resolution Procedure (RRDDP)

Purpose: To balance application priority (if

awarded) with duty toward community at issue.

(Spider Mans Uncle Ben: With great power

comes great responsibility.) Due to bump in

priority, community-based TLD owner must

adhere to community principles.

Standing:

Established institutions associated

with a defined (as opposed to

clearly delineated) community. See

RRDRP at 5.2.

Must have already filed complaint with

online Problem Report System (RRPRS).


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Registry Restriction Dispute Resolution Procedure RRDRP)Logis t ics :

Provider: NAF

Filing fees/costs: Still TBD (though check with NAF).

Burden of Proof: Burden on objector; must prove by preponderanceof

evidence (unlike PDDRP-TM).

Pleadings: Substantive portion 5,000 words or 20 pages max.

Discovery: Not as formalized as PDDRP but allowed in exceptional cases

(similar language to New gTLD Objection Procedure).

Panelists: Like PDDRP, single panelist by default though any oneparty can

request three (3).

Default: Also like PDDRP, setting aside default possible with good cause


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Registry Restriction Dispute Resolution Procedure RRDRP)Other Aspects:

Additional Submissions:

Explicit right of reply for Objector (like PDDRP-TM)

Respondent Surreply notmentioned (like PDDRP-TM)

Hearings:

Not required, though can be requested (video/teleconference preferred)

Appeals:

Similar appeal procedure to PDDRP-TM.

Respondent Surreply notmentionedPanel will usually grant leave, as with most

LRO objections)

Harm/Detriment:

There isa measurableharm vs. a l ike l ihoodof materialdetriment

Is vs. likelihood

Just measurable but no need to be material?


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Remedies:

Unlike objections (which would result in either denial of TLD application bid)or UDRP/URS (which transfer or suspend/delete second-level names) Panel

has discretion to implement series of Escalating customized remedies.

Allowed:

Temp suspending ability of TLD to provision new names.

Termination of TLD contract (nuclear option).

Other stuff?

Lawsuits: like PDDRP-TM and unlike New gTLD, RRDRP is no t

exclusive remedy (more on this in Other Approaches later).

Not allowed: Money damages or sanctions.

Additional monitoring requirements (e.g. more frequent WHOIS).

Registry Restriction Dispute Resolution Procedure RRDRP)


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Registry Restriction Dispute Resolution ProcedureAny thing we can take from Comm unity Object ions (which are

Complainant-v.-Regis try preceden t)?

Too early to tell very much yet, but a number of decisions are scheduled

to come in over coming weeks.

As in String Confusion, ICC panels may issue contradictory rulings oncertain issues (even on same string! See .CAM cases).

Also note: A number of prominent applicants recently (9/24 ) sent letter to ICANN

calling for suspensionof decisions to allow for additional training of panels (in

particular ICC panels) on AGB and how ICANN multi-stakeholder model works etc.

See http://bit.ly/1b8qmYT.
http://bit.ly/1b8qmYThttp://bit.ly/1b8qmYT


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Mechanisms for Challenging Community-Based

Applications (post-delegation)

Public Interest Commitment Dispute Resolution Policy (PICDRP)

Purpose: (confusing) Not involving charity orpro

bono work, but simply voluntarily agreeing to additional

protective measures to assuage public concerns

on certain strings.

Dispute Providers: Still TBD. (PICDRP introduced in Feb 13

and is still in drafting stage).

Burden of Proof: Burden on objector; preponderance of

evidence standard (same as RRDRP and in contrast to

PDDRP-TM --- are we detecting a pattern here?).

Standing: Someone materially harmed by activities of

registry that has agreed to a PIC as part of TLD application

process.


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Public Interest Commitment Dispute Resolution ProcedurePICDRP)An ything we can take from Object ions or oth er Complainant-v.-Registry

precedent?

Not really, though ICANN Contractual Compliance efforts mayprovide

someguidance on how issues can be approached.

PICDRP Public Comments showed tension between idea of outsourcing

to DRP provider vs. ICANN doing enforcement internally (or a mix of thetwo) approaches).

Differentiate between mandatoryPICs (similar to GAC Beijing

Communiqu Category 1 safeguards 24/7 abuse contact, complying

with laws, beefed up WHOIS, etc.) vs. voluntaryPICs that registry

chose to adopt on case-by-case basis. Each PIC will have aSpecification 11 which is a good place to start any review.


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UDRP

Notwithstanding the alphabet soup of PDDRP, RRDRP and other new DRPs, the brand managers old

friend the UDRP is still fully available as an enforcement tool for combating cybersquatting that occurs on

the second-level.

However, given the likely huge increase in volume stemming from 1000+ new gTLDs launching

over the coming months, some thought should be given to updating a companys current

enforcement strategies, at least as they relate to the UDRP.

Most notably, what are some ways that a brand holder can save costs while still meeting a

significantly-increased UDRP workload?

Leverage the new (and cheaper) URS procedure, if one has a slam dunk case (i.e.clear and convincing evidence);

Outsource UDRP (and/or URS) case handling to provider that uses BPO-style

techniques to maximize efficiencies and pass savings on (e.g. volume discounts, monthly

retainers and other alternative billing models);

UDRP/URS workload should be minimized by preventative maintenance (e.g. TMCH

Sunrise, blocking mechanisms like Donuts DPML, etc.) to the fullest extent practicable.


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Other Approaches

Other means are available, depending upon what rights/interests one wants to protect

(IP, community, etc.) some legal, some strategic:

File a complaint/objection under provisions of a voluntarily-imposed formal

RPDRP (if adopted by a restricted-access registry);

Leverage added rights-protection mechanisms at registries (e.g. DonutsDPML);

Submit a grievance (even if no formalized dispute policy exists) to registry

compliance staff (whether internal or outsourced to dispute provider or law firm),

the registrys governance council or registrant advocate/ ombudsman

File a lawsuit (PDDRP-TM, RRDRP & PICDRPs are non-exclusive remedies);


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Other Approaches: Registry-specific Registration

Policy Dispute Resolution Policy/Procedure (RPDRP)

Wait, theres anotherDRP? Youve got to be kidding right?!

While there is no specific RPDRP in the Guidebook, if

registry voluntar i ly adopts a restricted/limited access

approach to operating its TLD as a value-add to potential

registrants (instead of an entirely open or closed strings)

it might also implement a formalized dispute resolution

procedure as a method of resolving issues that arise ingranting or denying access to that TLD.

How will I know? Check the contents of the registrys

New gTLD application. Also any registry that adopts

such a model will likely publish information well in advance

of roll-out.


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Other Approaches: Registry-specific Registration

Policy Dispute Resolution Policy/Procedure (RPDRP)

Illustration:

Proposed (hypothetical) restricted-access TLD:

.ELVISIMPERSONATOR

Graceland has been trying for several years to mandate that Elvis

impersonators be officially licensed (i.e. to protect consumers from

severe material detriment from unauthorized rogue impersonators

that may even look more like Liberace! See, e.g.: Elvis

Impersonators Under Threat http://www.nme.com/news/elvis-presley/22830

If Joey Vegas had his .ELVISIMPERSONATOR application

denied (e.g. for using a candelabra and bouffant hair), and if theregistry operator had a RPPDRP in place, he could have an

opportunity to submit documentation (showing that he is indeed a

worthy tribute to the King). The registry via the appropriate avenue which

could include:

compliance officer(s);

governance council;

registrant advocate/ombudsman;

A DRP or other external entity (e.g. a law firm) that the registryoutsourced handling of such issues to
http://www.nme.com/news/elvis-presley/22830http://www.nme.com/news/elvis-presley/22830http://www.nme.com/news/elvis-presley/22830http://www.nme.com/news/elvis-presley/22830http://www.nme.com/news/elvis-presley/22830


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Other approaches:

Registry-specific Rights Protection Mechanisms

A number of new registries have stated that they will be adoptingadded rights-protection mechanisms (RPMs). One (real-world)

example would be Donuts proposed Domain Protected Marks

List (DPML) model. See, e.g.Donuts application for

.CAMERA at Ques. 18(a): tps://gtldresult.icann.org/application-

result/applicationstatusapplicationdetails/859

How it Works: DPML allows brand owners to block their

trademarks from registration at the second level across all ofDonuts (estimated) 300+ TLDs at a fraction what it would

cost to defensively register such terms. Once blocked, domain

remains 404/unresolved (no parking pages).

Brand owners submit to registrar an exact match of their

mark(s)as validated by the Trademark Clearinghouse

(TMCH) -- or (important!) a term that containsthe exact matchof the mark(s).
https://gtldresult.icann.org/application-result/https://gtldresult.icann.org/application-result/https://gtldresult.icann.org/application-result/applicationstatus/applicationdetails/859https://gtldresult.icann.org/application-result//applicationdetails/859https://gtldresult.icann.org/application-result//applicationdetails/859https://gtldresult.icann.org/application-result/applicationstatus/applicationdetails/859https://gtldresult.icann.org/application-result/https://gtldresult.icann.org/application-result/https://gtldresult.icann.org/application-result/https://gtldresult.icann.org/application-result/


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Other approaches:


How This Differs From TMCH Sunrise:

TMCH is simply a databaseof marks that have been

verified, with a Sunrise feature that allows brand

owners the ability to reservenames that match their

mark (if they so choose) during a prescribed Sunrise

period.

Donuts DMPL on the other hand, is a means ofaffirmatively block ingany second-level registrations,

and is not tied to any specific Sunrise period.

The block lasts up to five (5) years, and potentially

offers greater coverage than TMCH Sunrise, in that the

domain need only containan identical match of the

mark in question (Compare: TMCH Sunrise only

encompasses name that ar ean identical matchwithout any additional characters).


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Other approaches:


What about IDNs?

The TMCH currently accepts IDNs, so long as they

are the entire string (and not mixed with Latin

characters). To date, the TMCH has Hangul,

Hebrew, Arabic, Katakana, Cyrillic and Han marks

in the database. According to Donuts, the DPML

will be able to support registrations in English,

French, German, Spanish, and Chinese (and will

be looking to adopt other TMCH languages very

soon).

Any minimum-character or other limitations?

1-2 character names = not supported.

3 characters = supported but only if entire TM.

Domains already registered cannot be retoractively

blocked via DPML.


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Other Approaches: Registry-specific RPMs

Trademark DPML String Validity

Yahoo yahoo Valid

Amex myamexcard Valid

Verizon ver1zon Invalid

The DPML string must be an exact match or fullycontain

an exact match of the validated mark.

I l lustrat ion:


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Other Approaches:


Other unique examp les?


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Other Approaches: File a Lawsuit

While pre-delegationdisputes were handled solely by

arbitration, and challenging any decisions (e.g. LRO,community, string confusion, etc.) rendered may be

difficult, absent evidence of biasor inappropriate

conduct by panelist(s) see, e.g. Section 10 of the

Federal Arbitration Act addressing concerns post-

delegationis not so limited.

PDDRP-TM, RRDRP and PICDRP (March draft) each

contain (in addition to the aforementioned appeal

process at DRP) specific language stating that these

procedures are intended to be a non-exclus ive remedy,

and that aggrieved parties may seek redress in court. See,

e.g. RRDRP and PICDRP (March draft) at 21.1; see also

PDDRP-TM at 22.


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Framing the Cause ofAction:

Trademark-based issues would likely be either for

trademark infringement/unfair competition/passing off etc.,

though community issues likely need to be framed in a

breach of contract or declaratory judgment (but see this

language from RRDRP drafting history:

While there may be a concern that this will create a

new class of potential claimants under a theory thatthey are third party b eneficiariesto the registry

agreement between ICANN and the registry

operator, that is not the intent.

http://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htm

(emphasis added).

Where to file: Central District of California (L.A.) or other

Locale, based on situation-specific venue/PJ concerns.
http://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htmhttp://www.icann.org/en/news/public-comment/rrdrp-15feb10-en.htm


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I l lustrat ion: Del Monte Intl v. Del Monte Corp., Case No CV13-5912 (C.D. Calif.)

Skinny: Del Monte Europe lost LRO to Del Monte U.S.A. over .DELMONTE TLD, and now seeksDeclaratory judgment in L.A. Central District. Complaint filed 8/13/13, Ds time to answer extended.


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See you all at ICANN Buenos Aires!


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Further Information:

URL: http://www.newgtlddisputes.com

eMail: [email protected]

Tel: +1(888) 402-7706; +1(818) 444-4582

eFax: +1(818) 474-7070

Twitter:@newgtlddisputesLinkedIn: www.linkedin.com/in/donmoody/
http://www.linkedin.com/in/donmoody/http://www.linkedin.com/in/donmoody/

Documents

WRG New gTLD Conf-2 Presntn DonMoody 20130925 (Final)