GNSO Review of all Rights Protection Mechanisms (RPMs) in All gTLDs PDP Working Group Face-to-Face Meeting

Author
Bonface Witaba

The session that was co-chaired by Mr J Scott Evans (Associate General Counsel, Adobe Systems Incorporated), Mr Phil Corwin (Founding Principal, VirtuaLaw LLC) and Ms Kathy Kleiman (Founder, ENIAC Programmers Project), sought to deliberate on charter questions pertaining to the Review of Rights Protection Mechanisms (RPMs) in all generic top-level domains (gTLDs) Policy Development Process (PDP) Working Group, in addition to soliciting input from the broader community on these ongoing discussions.

Evans took the participants through the agenda, pointing out that the session was a three-hour session, and would be broken into three different parts. He explained that the first part of the meeting would consider the sub-team’s work with regards to narrowing down and clarifying the charter questions, and identifying the data collection needed for the Sunrise period and a Trademark Claims service, supported by use of a Trademark Clearinghouse (TMCH).  Evans added that the second hour would be spent discussing the work that has been done by another sub-team with regards to the trademark claims notice. The third hour would contain discussions centring around registries, registrars, and how the RPMs are used in the system.

Evans kick-started the discussions by stating that as co-chairs, they took part in reviewing the last round of new generic top-level domains, and like the New gTLD Subsequent Procedures Working Group, they were looking at the rights protections in this second round. He mentioned that the overarching aim of the charter was to look at the rights protection mechanisms, to determine if they were functioning as they were designed to, and whether there was any need for changes or revisions to be made. Further, he stated that they had divided their work into two phases and were currently in phase one, a phase that aimed to tackle all the rights protection mechanisms ranging from the Post-Delegation Dispute Resolution Procedures (PDDRP), the trademark claims notices, the Sunrise period, the TMCH, and last but not least the Uniform Rapid Suspension System (URS).

Corwin intervened to say that the first RPM that the PDP Working Group looked at was the Trademark Dispute Resolution Procedure, which was the only RPM that was applied at the top level. He added that the PDP Working Group was in two phases, and that phase one needed to be completed before the next round of gTLDs. The second phase, he said, was to be focused on the UDRP which is a consensus policy.

Ms Lori Schulman (Senior Director, Internet Policy, International Trademark Association (INTA)) explained that the PDP Working Group took 22 questions that they were asked to consider, including general questions about the RPMs. She said that the Working Group then narrowed down the questions to Sunrise-specific issues where things would be relevant.

Prof. Amadeu Abril i Abril (ESADE Law School, Ramon Llull University in Barcelona) felt that the idea of the Trademark Clearinghouse was destructive for the vast majority of trademark owners and would-be registrants that approach it as registry operators. He pointed out that the failure in the design of the system did not lie with the TMCH, but with ICANN, which failed to implement labels for words that have IDNs.

In his intervention, Mr Rubens Kuhl (Product Marketing Manager, NIC.br) suggested that the PDP Working Group directs trademark owners to exercise care in their trademarks, and that they should not try to register trademarks that do not have a meaning in a specific context.

In response to Kuhl's appeal, Mr Greg Shatan (Partner, Bortstein Legal Group) remarked that unless it was in the rules of the registry, each registrant in Sunrise or otherwise should have the ability to make their own choice about why they are registering in a particular TLD.

The second phase of discussions took off with Schulman exploring the issue of whether the availability of Sunrise registrations for identical matches should be reviewed, whether the matching process should be expanded, and how registrants’ freedom of expression and fair use rights could be protected and balanced against trademark rights. She further ventured into the question of Sunrise and premium name pricing, vis-à-vis its limit on trademark owners’ ability to participate in the Sunrise period.

Schulman explained that the second level domain names that are offered for registration in the determination of the registry were more desirable for the purchaser, and commanded a price that was higher than a non-premium name.

Mr James Bladel (Vice President of Policy, GoDaddy) sought for clarity of the terms 'standard pricing' and 'non-premium' as referred to by Schulman. Bladel’s concern was echoed by Kleiman, who also needed clarity on the definition of 'standard pricing'. Schulman responded by stating that the term was not clear in itself, thus there was a need to have some baseline understanding of it.

Discussions in the last track of the session focused on registries and cyber-squatting.

Mr George Kirikos (President, Leap of Faith Financial Services Inc. and Leap of Faith Research Inc.) gave instances when. xyz had their price promotion for penny domains. He felt this might have caused one to have data skewed, if one was to take the absolute number of UDRP and URS cases, or cyber-squatting instances.

Shatan pointed out that UDRP/URS data was not the only indicator of a potential case of cyber-squatting. He reiterated that there were a number of different ways to deal with domains that are abusive or infringing.

Mr Brian Beckham (Head, Internet Dispute Resolution Section, World Intellectual Property Organization (WIPO)) emphasised that the UDRP was one of those consensus policies, and that paragraph two of the UDRP required that any registrant who registers a domain name in a gTLD agrees not to infringe third-party rights.

Mr Paul Tattersfield (remote participant) asked whether the PDP Working Group would consider extending 'proof of use' requirements for Sunrise names to all trademarks for the issuance of TMCH notices. His suggestion was guided by the fact that some jurisdictions allowed trademarks for which there are no underlying goods and services to protect.

Kuhl decried the claims implementation, terming it as flawed.  Kuhl suggested that the PDP Working Group revises it. He revealed that there were registrars and resellers that would never support a claims period, and only went to serve a TLD after the claims period had elapsed. He added that this meant that such resellers could only process TLDs that are not in the claims period.

Corwin thanked Kuhl for his remarks and agreed that the claims notice that had been designed did not fit in with the way a lot of registrars operated. He said that the Working Group would be looking at the actual process that registrars and resellers use in the quest to iron out the complexity.

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