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© Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, UK. The content of this packet is an introduction to Cooley (UK) LLP’s capabilities and is not intended, by itself, to provide legal advice or create an attorney-client relationship. Prior results do not guarantee future outcome.

ICANN RPMs: Evolution, Revolution, or Better the Devil You Know?

Gareth Dickson, Cooley (UK) LLPNominet DRS Experts’ Meeting 2016

Understand what ICANN is and is

not

Review mechanisms to

protect rights within the legacy gDNS

Consider the advent of the new gTLDs and their

RPMs

Identify new but unofficial RPMs

Highlight the RPM issues now under review at ICANN

Assess whether there is room for further innovation in ICANN’s RPMs

Over the next 45 minutes we will…

BEYOND THE ACRONYM, WHAT IS ICANN, REALLY?

Internet Corporation for Assigned Names and Numbers

• Primarily a technical organisation concerned with ensuring the domain name system works.

• Policy is consensus-based, often referred to the “Bottom-Up, Multi-Stakeholder” model.

• Constituencies within ICANN represent different, often competing, interests. The Governmental Advisory Committee (“GAC”) commands significant attention and deference.

• Influence on DNS extends far beyond technical matters, particularly in IP matters.

What is ICANN?

The Three Layers of Digital Governance

THE GOOD, THE BAD AND THE UGLY

Existing mechanisms to protect rights in the gTLD DNS

Preventative Defensive registrations

Curative

Court proceedings

UDRP

The domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

The registrant has no rights or legitimate interests in respect of

the domain name; and

The domain name has been registered and is being used in

bad faith.

RPMs

December 2005

GNSO begins

policy work on DNS

expansion

September 2007

GNSO concludes

its work

June 2008New gTLDs approved at ICANN 32

June 2012Reveal Day.

March 2013New RPMs begin to bite

March 2016ICANN 55

THEN…

"I AM ALWAYS DOING THAT WHICH I CANNOT DO, IN ORDER THAT I MAY LEARN HOW TO DO IT." – PABLO PICASSO

Advent of the new TLDs

Trademark Clearinghouse

Uniform Rapid Suspension System

Trademark Post-Delegation Dispute Resolution Procedure

New gTLDs and New RPMs

http

s://c

omm

unity

.ican

n.or

g/di

spla

y/gs

ecom

ms/

Spe

aker

s+B

urea

u+H

ando

uts

“The Internet is expanding drastically....right now.”

http://www.trademark-clearinghouse.com/

• Launched March 2013 as “the central repository for validated trademarks for the purpose of protecting brands in ICANN's new gTLD program”.

• Enabled Sunrise applications and Trademark Claims service in new gTLD launches.

• Verification and registration of one mark for one year – US$150.

• Low uptake – only 38,000 marks in total – and limited “protection”.

Trademark Clearinghouse (TMCH)

(a) The registered domain name is identical or confusingly similar to a word mark:

(i) for which the Complainant holds a valid national or regional registration and that is in current use; or

(ii) that has been validated through court proceedings; or

(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and

(b) The Registrant has no legitimate right or interest to the domain name; and

(c) The domain was registered and is being used in bad faith.

Uniform Rapid Suspension Service (URS)

URS v. UDRP

URS

New gTLDs only (at present)

Suspension

$375+ for Complain

t (500 words);

$400+ for Reply (2,500 words)

Must be clear and convincin

g

1 expert at first

instance; 1 or 3

experts on appeal UD

RP

All gTLDs

and some

ccTLDs

Transfer or

cancellation

$1,300+ for Complaint

(5,000 words); no

fee for Reply (5,000 words)

Balance of

probabilities

1 or 3 experts; no

appeal

Virgin Enterprises Limited v. lawrence fain (FA1402001545807)

• “the only use of the disputed domain name … is what appears to be a generic, monetized parking page for the registrar … which does not appear to include any references to Complainant, Richard Branson or the BRANSON trademark.

• Taken together, these issues – that is, failure to establish in the record that the relevant trademark is strong plus the absence of any evidence that the domain name is currently being used in a manner that is associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.”

Famous fails in the URS: <branson.guru>

Netflix, Inc. v. Masterclass Media et al. (FA1509001639527)

• Respondent: “I registered this domain with the intention of creating a fan site, with news and updates on the Complainant’s service. I have all intention of proceeding while respecting the Complainant's marks”.

• Expert:

• “Such a use by Respondent could evidence a legitimate noncommercial or fair use under the Policy. … Respondent has failed to put into the record any facts which support his claim.

• URS paragraph 8.4 states ‘[i]f the Examiner finds that … genuine issues of material fact remain in regards to any of the elements, the Examiner will reject the Complaint under the relief available under the URS.’ Because this record raises, but does not provide adequate information to conclude whether or not Respondent has a legitimate right or interest to the domain name, I must find for the Respondent on this element.”

Famous fails in the URS: <netflix.news>

Banco Bilbao Vizcaya Argentaria v. Gandiyork SL (FA1403001548656)

• “Respondent has stated that it ‘provide[s] category 44 (*.LAND) services to Bellreguart, Beniarjo, Villalonga and Almoines, which are 4 neighboring towns’ – that is, towns that start with the letters B, B, V and A.  The Respondent’s provision of a ‘Superior Agronomical Engineer degree’ and ‘a map of the area’ are also informative.”

• Although Respondent “used the disputed domain name in connection with a monetized parking page that contains links related to the BBVA trademark, there is a key distinction in this case.  Namely … the Respondent in the instant case has stated that it was ‘most surprised’ to learn of the page, which differed from its own review of the website, and that its attempts to ‘cancel’ the monetized parking page were unsuccessful because ‘the domain is blocked because of this dispute.’  … this explanation from Respondent is plausible.”

Famous fails in the URS: <bbva.land>

• Administrative proceeding determined by external experts.

• Complainant is a trademark holder (registered or unregistered) claiming that one or more of its marks have been infringed, and thereby the Complainant has been harmed, by the registry operator’s manner of operation or use of the gTLD. Threshold review.

• Objections to conduct at top and second level: both require affirmative conduct by registry; both “clear and convincing”.

• No objections have been filed; none are expected.

Trademark Post-Delegation Dispute Resolution Procedure (TMPDDRP)

• Top level – registry operator’s conduct must cause or materially contribute to the gTLD infringing the mark.

• Second level – complainant must prove:

(a) there is a substantial pattern or practice of specific bad faith intent by the registry operator to profit from the sale of trademark infringing domain names; and

(b) the registry operator’s bad faith intent to profit from the systematic registration of domain names within the gTLD that are identical or confusingly similar to the complainant’s mark, which infringe the mark.

Insufficient for registry to merely be on notice of infringements: requires “encouragement, inducement, initiation or direction of any person or entity affiliated with the registry operator” for profit.

Trademark Post-Delegation Dispute Resolution Procedure

Module 3 of the Applicant Guidebook

• “The applied-for gTLD string infringes the existing legal rights of the objector.” Available to “rightsholders”.

• Test: whether the “potential use” of the applied-for gTLD by the applicant:

• takes unfair advantage of distinctive character or reputation of the objector’s registered or unregistered trademark or service mark (“mark”), or

• unjustifiably impairs distinctive character or reputation of the mark, or

• otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the objector’s mark.

Legal Rights Objections

• “There is substantial opposition to the gTLD application from a significant portion of the community to which the gTLD string may be explicitly or implicitly targeted.” Available to “Established institutions associated with a clearly delineated community”.

• Test:• The community invoked by the objector is a clearly delineated community;

• Community opposition to the application is substantial;

• There is a strong association between the community invoked and the applied-for gTLD string; and

• The application creates a likelihood of material detriment to the rights or legitimate interests of a significant portion of the community to which the string may be explicitly or implicitly targeted.

Community Objections

• “The applied-for gTLD string is contrary to generally accepted legal norms of morality and public order that are recognized under principles of international law.”

• No limitations on who may file an Objection, subject to a “quick look” designed for early conclusion of frivolous and/or abusive Objections.

Limited Public Interest Objections

• Three forms:

• consensus that an application should not proceed. Creates “strong presumption” that the application should not be approved.

• concerns about an application “dot-example.” Board is expected to enter into dialogue with the GAC to understand the scope of concerns and explain its decision.

• corrective requirement that raises a strong presumption that the application should not proceed unless remediated as per the Guidebook.

• To be submitted by the close of the Objection period; Applicant to respond within 21 calendar days.

GAC Advice

• Board could consult with independent experts, e.g. those hearing objections in the New gTLD Dispute Resolution Procedure, in cases where the issues raised in the GAC advice are pertinent to one of the subject matter areas of the AGB.

• BUT no limit on what issues could be raised, even if already addressed by AGB criteria; and GAC was not held to the deadlines prescribed in the AGB.

• Precursor to assertiveness of some GAC reps regarding applications for <.wine> and <.vin>, and TLDs which coincide with strings of national, cultural, geographic or religious significance.

• Perceived duplication of work where appeared governments didn’t want to compromise.

GAC Advice

• Aside from GAC Advice, all RPMs are targeted at specific abuses and are more likely to be curative than preventative.

• GAC sees RPMs and content regulation as unfinished business.

• ICANN community is diverse and compromise often offends everyone while giving no-one what they want.

• ICANN does not want to take decisions itself: relies on independent experts.

View of RPMs suggested by gTLD program

CARROTS AND STICKS MAKE AN INTERESTING MIX

Advent of the new RPMs

<trademark.sucks>

GA price for TM owner $2,499

“Block” price for standard names $199

GA price for TM critics $10

Sunrise Price $2,499

• www.registry.sucks

“dotSucks is designed to help consumers find their voices and allow companies to find the value in criticism”

• Registry Premium Names

• Market Premium Names

• Block “standard” names

<trademark.feedback>

.feedback

Standard

$39.99

TM claims

$5,000, 2 year limit

All sites must

contain feedback

Self-serve $720

• http://www.nic.feedback/faq/

“To enable a universal way to give feedback on everything. … you name it and we help collect feedback on it.”

• Defaults to forum for feedback concerning trademark

• “UDRP-proof”

• Free Speech Partner Program / EAP

<trademark.tickets>

Fast-track application for TM owners

Standard applications can be challenged by TM owners

Winner is first

rightsholder to apply

• http://tickets.tickets/domains-watch/

“Domains Watch … ensures that genuine rights holders around the world have the best possible opportunity to secure their domain assets at the point of registration.”

• “the ultimate anti-cybersquatting system?” Domain Incite

<trademark.donuts>

Stops a trade

mark from being

registered

Applies across all

Donut registries

Approx. $3 per

name per year

• http://www.donuts.domains/services/dpml

“Trademark holders can block their trademarks from registration at the second level across all Donuts domain names.”

• Piggy-backs off TMCH

• Doesn’t apply to Premium or Reserved Names

• BT v. One In A Million – still good law, according to the IPEC.

• Online Dispute Resolution – Civil Justice Council modelled its recommendations for online dispute resolution on procedures like the DRS.

• Defensive registrations and defensive applications

Remedies outside ICANN

“IF I HAD ASKED PEOPLE WHAT THEY WANTED, THEY WOULD HAVE SAID FASTER HORSES” – HENRY FORD

Final Issue Report on a PDP to Review All RPMs in All gTLDs

GNSO RPM PDP

Phase 1

TMCH

URS

PDDRP

Phase 2

UDRP

Substance

Procedure

Two-phase review of all RPMs

UDRP

Substance

Appeals

Limitation periods

“and” vs “or”

Procedure

Presumptions

Panelist selection

Damages / costs

Two-phase review of all RPMs

ICANN’S FINAL FRONTIER?

Content Regulation

“Registrar shall take reasonable and prompt steps to investigate and respond appropriately to any reports of abuse.”

What “abuse” is covered?

What is a “report”?

What is an “appropriate” response?

Registrar Accreditation Agreement 2013, Clause 3.18.1

The Three Layers of Digital Governance

President’s Opening Speech, ICANN 54

Fadi Chehadé on ICANN’s remit with regard to website content (click here to view online)

President’s Opening Speech, ICANN 54

“We do not have responsibility in the upper layer... Let me be superbly clear here. The community has spoken and it’s important to underline that in every possible way. ICANN’s remit is not in the blue layer. It is not in the economic and societal layer… So when people ask us to

render judgment on matters in the upper layer, we can’t… So let’s be superbly clear that our role stops at this yellow layer.”

“I also think as a community, we should understand that we have responsibilities in that ecosystem. Our responsibilities include, the

importance of, once determinations are made, to respond to these. How do we respond to these? I hope voluntarily.”

“all of us should work together. But it’s not at ICANN. Because ICANN’s remit is not in determining what action to take.”

CAN RPMS BE BETTER IN THE NEXT ROUND OF DNS EXPANSION?

Conclusions

• Lessons learned include:

• TMPDDRP is not useful.

• Utility of URS is decreasing.

• There is appetite for preventing clearly illegal content, but ICANN needs a third party to make relevant determinations. It needs help.

• The UDRP may be reviewed at some point in the near future, but not necessarily reformed.

• gTLD objections should have appeal process, be more consistent, and be cheaper.

• Court-based remedies remain attractive, especially if BT v. One In A Million can be relied on.

Evolution, Revolution, or Better the Devil You Know?

attorney advertisement

© Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, UK. The content of this packet is an introduction to Cooley (UK) LLP’s capabilities and is not intended, by itself, to provide legal advice or create an attorney-client relationship. Prior results do not guarantee future outcome.

ICANN RPMs: Evolution, Revolution, or Better the Devil You Know?

Gareth Dickson, Cooley (UK) LLPNominet DRS Experts’ Meeting 2016