A former trademark attorney himself, Owen Smigelski has been involved with INTA since the 2003 Annual Meeting in Amsterdam (where, incidentally, he also proposed to his wife). His love of trademarks began when he was asked to translate and explain the first iteration of the Uniform Domain Name Dispute Resolution Policy (UDRP) while interning for a law firm in Paris. After working in several boutique IP and general practice law firms in San Diego and Los Angeles, Mr. Smigelski joined Sunrider International, an INTA corporate member, and became even more involved with the Association on Internet issues. He was selected for INTA’s Internet Committee and later represented the Intellectual Property Constituency (IPC) and INTA on ICANN’s Internationalized Registration Data Working Group. Three years ago, Mr. Smigelski joined ICANN as a manager in the Contractual Compliance
department and today he serves as Director, Contractual Compliance. His role is to ensure that ICANN contracted parties abide by the agreements they enter into with ICANN by helping to process the estimated 46,000 complaints received by ICANN annually.
Mr. Smigelski spoke with the INTA Bulletin
about how his role, and ICANN Contractual Compliance generally, affects trademark owners; what trademark owners need to be more aware of when submitting complaints through ICANN; and how the trademark community can better help the Contractual Compliance department deliver on its mission of keeping registrars and registries in compliance with ICANN policies.
How does ICANN Contractual Compliance work?
Contractual Compliance ensures that ICANN- contracted parties—registrars and registries—abide by the agreements they sign with ICANN. For registries that means the Registry Agreements
(RAs) and for registrars that means the Registrar Accreditation Agreement
(RAA). It also applies to consensus policies like the UDRP
, which is of particular interest to trademark attorneys. I manage and am responsible for all registrar complaints submitted to ICANN, which accounted for about 95 percent of the 46,000 complaints ICANN received between May 2014 and May 2015.
The most popular complaints we receive are Whois inaccuracy complaints. That is where someone alleges that the Whois data used to register a domain name contains inaccurate information. That represents about 80 percent of our complaint volume.
ICANN Compliance has two types of resolution processes. Our goal is to ensure compliance, not necessarily to punish. So the first phase is called the informal resolution process. That’s a 1-2-3 notice process with registrars and registries where they have three opportunities to come back into compliance. We send a first notice and they have five business days to respond (15 for Whois inaccuracy complaints), and then they get five business days for each subsequent notice. After the second notice, we do a telephone call and after the third notice, there’s a telephone call and a fax. That part is kept confidential, and the reason for that is to foster collaboration; we want the contracted parties to work with us. If a registrar is not sending the proper reminder notices they’re supposed to, for instance, we want that registrar to fix that. We want them to come back into compliance, because ultimately that is protecting the registrants and the people who own the domain names. That process was developed in consultation with the community—it’s not something ICANN did from the top-down.
If a contracted party doesn’t demonstrate compliance, then it proceeds to the formal resolution process. This is the public-facing part of it. They will receive a notice of breach, it will be published on ICANN.org, which will detail specifics about what led to the breach, and if they don’t cure the breach, they can either be suspended (meaning a registrar can’t register domain names for a period of time) or the contract will be terminated.
How successful is the informal resolution process?
Of the 46,000 or so complaints that ICANN had in the last year, only 90 went to the formal process.
What are some of the other common complaints you receive?
The next highest volume is transfer complaints, which refer to people who have issues transferring a domain name from one registrar to another; that’s about another 10 percent. And then the third biggest is domain renewal complaints, where someone is having trouble renewing their domain name, or the domain expired but they weren’t properly notified that the domain was expiring.
What are the most common trademark-specific complaints you receive?
One that actually is pretty big with trademark and copyright attorneys is the Whois inaccuracy complaint. We have several brand protection and IP law firms that submit large volumes of Whois inaccuracy complaints. A lot of times, there will be trademark issues in a domain name or allegations of a counterfeit product being sold on a website, but when they try to contact the registrant, the Whois data is bad. Through the complaint process, they try to get that information corrected. Sometimes, if the information isn’t corrected, the registrar will just suspend the domain name and that may solve their problem.
We also handle complaints about the Uniform Rapid Suspension System (URS). Only a handful per month of those come in, and most are actually invalid. We don’t validate the complaints before they come in, so we get everything. I looked at the last month and we received six URS complaints and five of them were closed before they were sent to a registrar, which means they were invalid. Valid reasons for a URS complaint are that the domain name wasn’t locked when the URS was filed or the decision wasn’t implemented. When it’s invalid, someone may be complaining about privacy proxy or something in .com—things that aren’t related to URS complaints. Some people just write saying, “I hate ICANN” or “I hate my registrar!” We get all sorts of complaints that come in. So every complaint is reviewed by a person here at ICANN before it’s sent to a registrar or registry. In the past, that was not the case and a lot of junk was going through to registrars and registries. Anywhere from 20 to 30 percent of complaints are closed before being sent to a registrar or registry, so that gives you an idea of the rate of invalid complaints we get.
What do you think are some of the reasons for that high rate of invalid complaints?
I can only really speculate as to why people do that. You’d be surprised by some of the interesting complaints we receive. But I think a lot of it is people not necessarily understanding. Sometimes we get people trying to file a new UDRP complaint using the complaint process, rather than obtaining counsel and going through the UDRP process. As we evolve the website there are future improvements planned to make some smart forms that would help walk people through getting the right type of complaint submitted, but those are still in development at this point.
What other trademark-related complaints do you get?
We get about 10 valid complaints relating to the UDRP per month. Those usually have to do with the failure of a registrar to respond to the UDRP provider, or the more common one is failure of a registrar to implement a UDRP decision. After the UDRP decision is transmitted to the parties, it must be transferred to the prevailing party within 10 days and in that period the losing party can file litigation in a court of competent jurisdiction. Quite often what we see is that the registrars just don’t implement that decision, so we get a lot of complaints about that. In June of 2014, a registrar received a notice of breach for a complaint that did come out of failure to implement a UDRP decision. They implemented the decision but then they didn’t let the registrant transfer the domain name out to a different registrar of their choice. Having been to three Annual Meetings since I joined ICANN, I’ve noticed that a lot of trademark practitioners don’t know what to do. The most common follow-up question I receive is “how can I get the registrar to implement the UDRP decision?” And I just tell them to file the complaint. When a registrar’s accreditation is on the line and they can’t demonstrate compliance, there’s usually some pretty quick action. I know some trademark attorneys don’t like this approach because their perception is that they could get it done quicker on their own with a cease and desist letter, but in my experience, even though there may be a little bit of a delay, registrars comply with those notices.
There are new UDRP Rules coming out July 31—can you explain what they are and how they will impact trademark owners?
These will clear up some ambiguity that was in the UDRP. Now a registrar will be required to lock a disputed domain name within two business days of receiving a UDRP complaint and that means the domain name can’t be transferred or updated or deleted. There are requirements that the registrar must remove the lock within one business day of receiving notice that the proceeding was withdrawn or dismissed. ICANN will process UDRP lock complaints with 24 hour deadlines, including weekends, whereas most other notices have five business day deadlines. And registrars must be more timely with providing ICANN and the parties with implementation of decisions (three business days). What we’re doing here internally is outreach with contracted parties; we’re modifying our complaint form and templates to incorporate the changes and we’re doing some additional improvements to the form to expedite the processing of UDRP complaints based on lessons learned from past complaints.
What’s the typical timeline for resolving complaints through ICANN?
Usually it’s 10 to 15 business days for complaints to be resolved. But UDRP complaints rarely go to a second notice. Last year was the first time a UDRP complaint led to a notice of breach; usually the registrars are very good at complying with those types of inquiries.
What do you want trademark attorneys to know about ICANN Contractual Compliance?
ICANN Contractual Compliance is here to help the entire Internet community, and that does include trademark attorneys, which has been a small and now growing and very vocal group. I’d also like them to understand our goal, which is to ensure that the contracted parties comply with their contracts with ICANN. We can do certain things, but it has to be within those agreements. We’ll sometimes get a complaint from a trademark attorney saying “you need to shut this domain name down because it’s infringing our trademark,” but that’s not something ICANN can do. They do need to go through the UDRP or URS process, as applicable.
Providing as much information as possible up front to ICANN is also good, because that reduces the turnaround time. Understand that there is this process, though. We can’t immediately terminate a registrar just because a complaint is filed against it. We do need to go through the process to ensure compliance or to bring them into compliance.
What would you say to practitioners who are reluctant to use?
First and foremost, it’s the community, not the ICANN staff that creates these processes. I hear quite a bit, “how can ICANN do that?” But it’s the ICANN community and it’s a bottom-up, multi-stakeholder consensus approach, so the way to influence it is to participate in these things. Everyone has the opportunity, but if your voice isn’t there, then obviously it isn’t going to be incorporated, and whatever concerns you might have raised might not get addressed.
I’ve also noticed that sometimes it can be a little bit combative or adversarial and one side decides to dig in its heels in against the other. It’s a good thing to roll up your sleeves and try to have some discussions and get to know people outside of the IPC or whatever constituency you’re in. And I know that’s happening now as well. There’s a Brand Registry Group within ICANN now, and I saw registry operators, trademark attorneys and IPC members at that meeting. It’s that kind of cross-collaboration that I think fosters these kinds of policies and changes coming out. One voice really can make a difference within the ICANN community. There are opportunities to get involved, whether attending a meeting in person, attending remotely, submitting public comments or volunteering to be on a policy working group, etc. There are so many opportunities for opinions to be heard. It’s not always sufficient to see one comment from the IPC; it’s good to see comments from individual brand owners because their concerns might be different, and it’s good to show there are a lot of voices and participation. Without that, the model won’t work as well as it could.
How else can INTA help?
One recent development is that ICANN became an INTA member. I see that as a good opportunity for ICANN and the community to collaborate. I myself have been to three of the last four Annual Meetings. So there continues to be that relationship-building. Also, we’re trying to encourage more non-IPC members and people outside of the ICANN community to get active. There’s a lot going on and there can always be more bodies and more participation. ICANN’s not something you have to travel to in order to participate. Every meeting is available remotely, live recorded, transcribed—everything is open and public aside from a couple of closed sessions. Sometimes there are even local hubs that will set up remote viewing areas.
Another thing is that ongoing right now is a Rights Protection Mechanism (RPM) review. That’s looking at all the RPMs within ICANN, including the UDRP. There was a public comment period that ended in May and there will be a report later this year coming out, which will probably lead to additional policy and working group opportunities. I’m not sure what’s going to come out of that, but there could be modifications to the UDRP that INTA and its members should certainly be involved with.
For more information on ICANN developments or to become involved with Internet and ICANN issues through INTA, contact INTA’s Senior Director of Internet Policy, Lori Schulman, at email@example.com.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association