Here are some initial thoughts on ICANN’s response to the IRT proposal, published a little earlier this month. Please bear in mind that ICANN is requesting GNSO¹s consensus view on the Trademark Clearinghouse and the Uniform Rapid Suspension System (URS). These are the views of myself and Kathy Kleiman and a reflection of our sense of events. NCUC will be meeting at length in Seoul to discuss the issues and develop our position for moving forward. To see the new documents, drafted by ICANN staff, please go to [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-urs-04oct09-en.pdf] for Uniform Rapid Suspension Service and [http://www.icann.org/en/topics/new-gtlds/draft-proposed-procedure-tm-clearinghouse-04oct09-en.pdf] for Clearinghouse.

First, some great news. The Globally Protected Marks List (GMPL) is completely gone (or so it appears at this stage). The NonCommercial Users Constituency (NCUC) was against the GPML from the beginning and in White Paper, Kathy Kleiman and myself submitted to ICANN (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/attachments/trademark_protection:20090813223000-0-19386/original/GPML%20White%20Paper.pdf), we further elaborated on the dangers of proceeding with the GPML.

The IP Clearinghouse is now re-named Trademark Clearinghouse. I consider this to be a great development. The term ‘IP’ encompasses other rights (patents, copyright, etc) and this is not the role of the Clearinghouse ¬ nor should it be. The Clearinghouse is just a repository and ICANN was correct in recommending a new, more restrictive name, following our White Paper (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/attachments/trademark_protection:20090813222941-0-18900/original/IP%20Clearinghouse%20White%20Paper.pdf).

The ICANN proposal did not follow NCUC¹s recommendation for regional clearinghouses. This was an important issue for nations and for IDNs. One entity cannot know the trademark laws and practices of all countries; but regional registries will understand the laws and nuances of trademark practice in the countries of their region. We expect to see some attention on this issue from GAC members at this meeting.

One clear problem of the Trademark Clearinghouse is its creation of a new, a very new, right to a global common law mark. A common law mark, which is trademark protection although there is no registration, is a very unusual right. It exists largely in common law countries, such as the UK and US. Very few countries allow trademark rights absent trademark registration (e.g., though a national Trademark Office) and even those countries with common law protection have national trademark registration (which all serious trademark registrants will use). The new proposal is problematic in that it allows any name written or expressed on a handkerchief, on a label, on letterhead to be listed and thus to gain global protection . absent any proof of national protection. That’s a real problem.

The URS is a different story. It has gone worse.

As always, we have the same question: why create a new system and not stick to the UDRP and amend it accordingly? The UDRP was designed for quick, cheap takedown of domain names. The URS is too quick, too cheap and new proposal fails even to limit cases to the .egregious cases. of domain name use that the IRT had highlighted.

NCUC and the White Paper submitted to ICANN mentioned that the creation of the URS could address .serial cybersquatting¹, a proposal that was not taken into consideration (https://st.icann.org/data/workspaces/new-gtld-overarching-issues/attachments/trademark_protection:20090813222923-0-19222/original/URS%20White%20Paper.pdf). So, the system will be open to gaming and abuse. The idea is for the URS to ‘lock’ the domain name rather than transfer or cancel it, as it happens with the UDRP. But, here is a possible outcome of this: trademark owners will use the cheap and fast URS to ‘lock’ the domain name and then proceed to the UDRP (submitting the URS decision as evidence for bad faith) and get transfer of the domain name.

The URS continues to use and justify itself in the dialectic of the UDRP. The new proposal says that the URS standard is similar to the UDRP, but the burden of proof is higher . but it is much, much lower.

Moreover, there is no mention on the legitimate rights or interests of domain name holders and the deadlines are too short ¬ 14 days as opposed to the UDRP¹s 20 days ¬ although there is a possibility for a seven-day extension. Trademark owners will game the system, file on Christmas Eve, and a domain name will be lost before the registrant even knows it is of concern. This should be a huge problem for all registrants: noncommercial, commercial and individual. It’s simply not fair; it’s not due process.

Further, the respondent is required to submit a statement on truth and accuracy of the submissions, while the trademark owners appears not to be under the same obligation. Why?

Also, beware, one error on your response, and you lose. The new URS proposal also the definition of .default¹ to include non-compliance with any the filling requirements– even minor, even by a registrant representing himself or herself. This is unfair, considering that mistakes are human and do not necessarily indicate an attempt to abuse the system. Creating such a rule, under the default definition, which is already subjected to UDRP misinterpretations, creates a very bad precedent.

Basically, the URS, as revised, preempts, replaces and displaces the UDRP without any of its balance or fairness. It does not focus on egregious cases, but all garden variety disputes . and gives the trademark owners a nearly automatic win.

This can’t be the way we want to open new gTLDs. And mass freezing of domain names under the URS can’t be the way we can expect registrants to flock to the new gTLDs registry applicants want to offer.