January 24
ICANN Working Group Moving Forward on Review of All Trademark Protections

Since mid-2016, an ICANN Policy Development Process (“PDP”) Working Group (“WG”) has been moving forward to conduct a comprehensive review of all Rights Protection Mechanisms (“RPMs”) in all generic top-level domains (“gTLDs”). The WG launched after ICANN’s policymaking Generic Names Supporting Organization (“GNSO”) Council approved initiation of the PDP on February 18, 2016, and then adopted its Charter on March 15, 2016. 

While in formation, the members of the WG selected three individuals to act as co-chairs and share in the administration of its work—the author, who represents the Internet Commerce Association in the Business Constituency (“BC”); immediate INTA Past President J. Scott Evans, who likewise participates in the BC on behalf of Adobe; and Kathy Kleiman, an attorney who is active in the Non-Commercial Users Constituency (“NCUC”). To date, the three co-chairs have reached consensus agreement on WG plans and have rotated the chairing of its weekly calls. The WG is one of ICANN’s largest, with about 150 members from around the globe and an additional 80-plus observers, who receive all WG emails.

Charter Assignment

A WG’s Charter is essentially its Constitution, setting forth its assigned task and also placing limitations on its jurisdiction.

The key sections of this WG’s Charter read as follows:

This PDP Working Group is being chartered to conduct a review of all RPMs in all gTLDs in two phases: Phase One will focus on a review of all the RPMs that were developed for the New gTLD Program, and Phase Two will focus on a review of the UDRP. By the completion of its work, the Working Group will be expected to have also considered the overarching issue as to whether or not all the RPMs collectively fulfill the purposes for which they were created, or whether additional policy recommendations are needed, including to clarify and unify the policy goals. 

At a minimum, in each Phase of this PDP, the Working Group is expected to first assess the effectiveness of the relevant RPM(s), for which the Working Group should seek the input of experienced online dispute resolution providers and other subject matter experts, as may be appropriate. The Working Group should also consider the interplay between and complementary roles of each RPM in seeking to more fully understand their overall functioning and effectiveness…

In the course of its work, the Working Group should monitor the progress of and, where appropriate, coordinate with, other ICANN groups that are working on topics that may overlap with or otherwise provide useful input to this PDP. In particular, this PDP Working Group shall maintain a close working relationship with the Competition, Consumer Trust and Consumer Choice (CCT) Review Team and the PDP Working Group on New gTLDs Subsequent Procedures.

As can be seen, the Charter requires the WG to consider the individual and collective effectiveness of all the “RPMs” created for the new gTLD program, and to recommend any desirable policy changes. Its work is to proceed in two phases, with the first focusing on the new gTLD program RPMs and the second on the first-ever comprehensive review of the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”). And this WG must maintain a cooperative relationship with the CCT review mandated by the Affirmation of Commitments as well as the parallel WG on new gTLD Subsequent Procedures that is reviewing all non-RPM aspects of the Applicant Guidebook (“AG”) in preparation for possible subsequent rounds of the new gTLD program.

The Charter also contains an attachment listing dozens of potential issues and questions relating to those issues. The WG is now actively reviewing and consolidating those questions to assure a coherent and productive focus for its work.

Work Plan and Progress

In consultation with WG members, the co-chairs initially set out the following sequential work plan:

  • Post-Delegation Dispute Resolution Procedures (“PDDRP”), which allow rights holders to challenge a registry operator alleged to be directly infringing or actively encouraging second-level infringement
  • Trademark Clearinghouse (“TMCH”), a database of registered trademarks meeting threshold validity criteria
  • Sunrise registration rights, one of the two RPMs based upon TMCH registration and providing a trademark owner with the ability to register at a new gTLD prior to the opening of general availability
  • Trademark claims notice, generated to registrants seeking to register a domain matching a TMCH term and warning that such registration may be infringing
  • Uniform rapid suspension (“URS”), the new rapid and low-cost supplement to the UDRP designed to suspend domains where infringement is readily apparent

So far, the WG has been generally adhering to its projected schedule, which contemplates completion of phase one and issuance for public comment of a preliminary report and recommendations just prior to the end of 2017. The UDRP review is expected to commence early in 2018, and no estimate has yet been made of how long it might take.

The WG completed its review of the PDDRP at an open session held during ICANN 57 in Hyderabad, India. Evaluation of the PDDRP was a challenge insofar as it is the one new RPM that has never been utilized. Nonetheless, the WG determined that the PDDRP should be retained and has tentatively agreed to create a means by which trademark owners with similar claims against a registry operator can bring a joint action and thereby share the costs of a proceeding.

Meanwhile, the WG has prepared a series of questions for both the provider and users of the TMCH and has begun its review of that trademark database, on which both sunrise registrations and claims notices depend.

Recently, the co-chairs also issued a joint memo stating their view “that the WG should undertake some notice and understanding of the blocking mechanisms, and any other additional RPMs that are being offered by registries or the TMCH as additions to the mandatory ICANN RPMs. We believe that market offerings provide additional information about the benefits and limitations of the RPMs, and that viewing the market holistically may spur better informed policy discussion within the WG.”

Those additional RPMs include:

  • The Ongoing Notifications service offered by the TMCH, through which it indefinitely provides notice to rights holders of any potential intellectual property infringement, beyond the original 90-day period. Notifications are available for exact mark matches and/or certain additional variations that are registered in a new gTLD. 
  • The voluntary extension by some registries of the claims service beyond the minimum of 90 days’ duration.
  • Protected Marks List blocking services offered by several portfolio new gTLD operators and which is suggested as an alternative to more costly sunrise registrations.

All of those additional mechanisms are based upon TMCH registrations and therefore, in the view of the co-chairs, are within the WG’s jurisdiction. They also interact with and influence the use of the ICANN-created RPMs.

Moving Forward

As can be seen, this WG has a large and very important task, and is still in the early stages of its efforts. There is still plenty of time to participate and make a contribution, and INTA members who are not already involved and who wish to become either an active WG member or a more passive observer should communicate their interest to the GNSO Secretariat. 

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