[PC-NCSG] draft UDRP/RPM Comments

[Kathy Kleiman]

Hi All,
Fearing that our deadline for the UDRP/URS/TMCH comments might be missed 
(it's Monday), I spent a good amount of time of my holiday putting 
thoughts together. As a member of the final UDRP and URS drafting teams, 
I see some good in this Preliminary Issues Report, and a lot of 
shortcomings.  I've set them out.  If someone wants to upload to Google 
Docs, please be my guest.  Overall, I think our NCSG voice is a critical 
one here.
Best,
Kathy
p.s. Hoping Stephanie can do her usual scrub.
p.p.s. below and attached (same document)

DRAFT DRAFT DRAFT

Comments of NCSG to Preliminary Issue Report on a Policy Development 
Process to Review All Rights Protection Mechanisms in All Generic 
Top-Level Domains


These comments of the Noncommercial Stakeholders Group (NCSG) address 
three key aspects of the Preliminary a) the organization and order of 
the evaluation, b) the scope of the reviews to take place and whether 
the rights of all stakeholders are reflected in the scope and goals set 
out, and c) the substantive issues and questions to be asked and 
evaluated. We appreciate the opportunity to comment.


*a) Organization and Order of Evaluation*


In Section 1.3 of the Preliminary Issue Report, Staff suggests three 
different approaches to the organization and order of evaluation of the 
Uniform Dispute Resolution Policy (UDRP adopted in 1999) and the Rights 
Protection Mechanisms (RPMs) adopted in 2012 for the New gTLD roll-out 
program. We would like to strongly suggest a fourth approach: evaluate 
UDRP first and RPMs second.


Why? The UDRP is the oldest consensus policy of ICANN and the one we 
understand the best. We have studied it the most and have the longest 
history of implementation and decisions. While we agree that the work of 
the UDRP should be staggered, we think it is the trunk of the tree from 
which all other trademark rights protection mechanisms take place. It 
works to embody the principles and purposes of our work in balancing 
trademark rights and the traditional fair use and free speech/freedom of 
expression rights of all others.


Work should certainly be staggered, but the UDRP should come first, not 
second. Further reasons include:


 1.

    The UDRP created the principles from which the URS and Trademark
    Clearinghouse (TMCH) were negotiated. Are those principles valid and
    strong? Do they need to be revised? Assessing the Uniform Rapid
    Suspension (URS) and Trademark Clearinghouse (TMCH) put the cart
    before the horse ? we should assess the strength of foundation ?
    before checking its higher and newer levels.

 2.

    The roll-out of New gTLDs is still in progress. We expected to be
    finished by this point, but many New gTLDs are still in contracting
    and others are still in contention. Key Sunrise and Trademark Claims
    periods are yet to be undertaken, and data about the roll-outs of
    all New gTLDs would be helpful. We will have a fuller data set if we
    wait for more New gTLD introduction.


Accordingly, we ask for UDRP first, and its RPM New gTLD offshoots second.


*b) Scope & Breadth*


This Preliminary Issues Report tells us (the readers/commenters) 
repeatedly that it will rely heavily and extensively on ?the 2011 GNSO 
Issue Report? and additional RPM materials.


But the 2011 GNSO Issue Report of the UDRP is half a decade old! That's 
light years in terms of Internet time, and if used, the UDRP Review will 
be missing:


         1.

            Major UDRP decisions of 2011-2015 (thousands of decisions)

         2.

            The entire overlap of the New gTLDs and their RPMs with the
            UDRP (one of the key criteria of evaluation in this ?Review
            of All Rights Protection mechanisms?

         3.

            The benefit of the Arbitration Forums self-reviews,
            including the /WIPO Advanced Workshop on Domain Name Dispute
            Resolution, May 2015/, in which inconsistencies of
            decisions, including in the free speech/freedom of
            expression area were candidly discussed and contemplated.

         4.

            Recent and strong ICANN work seeking to understand and
            incorporate Human Rights into the policy considerations of
            ICANN (note the many, many sessions on Human Rights,
            including by the Cross Community WG and the GAC in Dublin).


The UDRP Issues Report must be updated to include the UDRP work of the 
last half decade.


/_Further, all discussions of the Scope must include more than the needs 
of trademark holders. _/


We ask for fairness _and balance _in the representation of the goals of 
the upcoming UDRP and RPM evaluation process. On Page 17 of this 
Preliminary Issues Report, the goals are framed in a one-sided way:


?to inform and to clarify the scope of the analysis to follow, as to 
whether or not all the RPMs collectively can be said to achieve the 
intention of providing sufficient protection to trademark holders in 
both existing and new gTLDs, or if further changes may be required.?


But the protection of trademark holders **must take place within the 
fuller context of whether the rights and protections they seek are 
consistent with national law and public policy**.


By way of example, the owner of the National Football Team in Washington 
DC, Dan Snyder, certainly does not think that the trademark laws are 
providing sufficient protection to him and his longstanding US federal 
trademark for the ?Redskins.? His longstanding, powerful and very 
valuable US federal trademark for Redskins was recently canceled by US 
court for disparagement of Native Americans. Public policy 
considerations consistent with trademark law took effect to eliminate 
his federal trademark rights.


Under all national laws, trademark holders rights are limited and the 
rights of others are balanced. Including the rights to:

         1.

            Use generic and descriptive words in new and novel ways

         2.

            Use their last names, in all ways legal under law (which
            includes major protections in this area), and

         3.

            Use geographic words that accurately mark where an
            organization, business or individual is located.


Reflecting such a balance has **always been part of the goals of the 
UDRP and RPMs since their formulation and adopted by the ICANN 
Community** and must continue in the upcoming process.


We ask that the full balance of the goals of this review process be 
clearly laid out at /each and every opportunity./


Finally, we ask that this UDRP review not be an Expedited PDP without 
much more extensive evaluation. This is an evaluation of our very first 
consensus policy ? one adopted very quickly by ICANN and without any of 
the Stakeholder Groups that exist today. This is an evaluation of a 
sixteen year old consensus policy, and a review years in the making. 
Let's give it the full and careful consideration that it deserves.


100.

    *Potential Issues for Review in a PDP (Questions to be asked of the
    UDRP, URS and TMCH)*


We seek to add questions to the specific UDRP, URS and TMCH list, but 
offer an initial question/issue/category as yet unasked:


 1.

    *Addition of a New Potential Issue for Review in the PDP: Are the
    processes being adopted by Providers of UDRP, URS, and TMCH services
    fair and reasonable?*

    UDRP, URS and TMCH Providers are adopting procedures that change the
    fees, expand the time of services, add new services, allow
    additional responses by trademark holders and more. Many refuse to
    rotate their Panelists, assigning to cases Panelists who have a
    track record of nearly uninterrupted decisions for trademark
    holders. It is critical that the RPM Review process understand the
    procedural rules adopted by Providers and ask the key questions that
    every supervising body must:

    a. Are the Providers' procedures fair and equitable for all
    stakeholders and participants

    b. Are the Providers consulting with all stakeholders and
    participants in the evaluation, adoption and review of these new
    procedures?

    c. Are the Providers training both the Complainants and the
    Respondents, and their communities and representatives, fairly and
    equally in these new procedures?

    d. A Providers exceeding the scope of their authority in any of the
    procedures they are adopting?

    e. Is ICANN reaching out properly to the multistakeholder community
    when such procedures are being evaluated by ICANN at the Providers
    request? Is this an open and transparent process?

    f. What remedies exist, or should exist, to allow questions about
    new policies by the Providers offering UDRP, URS and TMCH services,
    and how can they be expeditiously and fairly created.

    g. What changes need to be made to ensure that procedures adopted by
    providers are consistent with the ICANN policies and are fair and
    balanced?



 2.

    *Specific Potential Issues Concerning the UDRP Review*


We list for inclusion the following Issues for evaluation with the UDRP 
Review


  *

    Recommend that the term ?free speech and the rights of
    non-commercial registrants? be expanded to include ?free speech,
    freedom of expression and the rights of non-commercial registrants?
    to include rights under US law and the United Nations Declaration of
    Human Rights.

  *

    Inclusion of: Are the critical concepts of ?fair use? and ?fair
    dealing? fully and accurately reflected in the UDRP (and also URS
    and TMCH rules)?

  *

    Are generic dictionary words being adequately protected so that they
    are available for all to use as allowed under their national laws
    and international treaties? E.g. sun, windows.

  *

    Are last names and geographic places adequately protection so that
    they are available for all to use allowed under their national laws,
    e.g, Smith, McDonald, Capitol Hill Cafe, Old Town Deli?

  *

    Now that Reverse Domain Name Hijacking is a regular finding of UDRP
    panels, indicating that domain name registrants are being abused by
    complaints brought against them in the UDRP process, what penalties
    and sanctions should be imposed on Complainants found to be reverse
    domain name hijackers? How can those penalties and sanctions to
    aligned to be fair as compared to the loss of a domain name taken
    from a registrant found to be a ?cybersquatter??

  *

    Are free speech,, freedom of expression and the right of
    non-commercial registrants *uniformly protected *in existing UDRP
    (and URS and TMCH) policy and its implementation. As currently
    phrased, the ?potential issue? asks if it is ?adequately protected,?
    but where we find differences among Panelists of different
    countries, we should ask if free speech is ?adequately and uniformly
    protected? ? as equity and fairness lies in both.

  *

    Should defenses be expanded, e.g., as seen in Nominet's policy and
    the URS.


 2.

    *Specific Potential Issues Concerning the URS Review*


We list for inclusion the following Issues for evaluation with the URS 
Review


      o

        Has ICANN does it job in training registrants in the new rights
        and defenses of the URS?

      o

        Are the expanded defenses of the URS being used and if so, how
        and when?

      o

        What sanctions should be allowed for misuse of the URS by the
        trademark owner?

      o

        What evidence is there of problems with the use of the
        English-only requirement of the URS, especially given its
        application to IDN New gTLDs?

      o

        How can the appeals process of the URS be expanded and improved?

        *4. Specific Potential Issues Concerning the Trademark
        Clearinghouse Review, Sunrise Period, and Trademark Claims*

    We list for inclusion the following Issues for evaluation with the
    Trademark Clearinghouse Review, Sunrise Period and Trademark Claims


      o

        Is the protection of the TMCH too broad?

      o

        Is the TMCH providing too much protection for those with a
        trademark on a generic or descriptive dictionary word, thus
        allowing a trademark in one category of goods and services to
        block or postpone the legitimate and rightful use of all others
        in other areas of goods and services? Are legitimate
        noncommercial, commercial and individual registrants losing
        legitimate opportunities to register domain names in New gTLDs?

      o

        Is the TMCH and the Sunrise Period allowing key domain names to
        be cherry picked and removed from New gTLDs unrelated to those
        of the categories of goods and services of the trademark owner
        (e.g., allowing ?Windows? to be removed from a future .CLEANING
        by Microsoft).

      o

        How should the TMCH scope be limited to apply to only the
        categories of good and service in which the generic terms in a
        trademark are protected?

      o

        How can TMCH services be much more transparent in terms of what
        is offered for ICANN pursuant to ICANN contracts and policies
        vs. what services are offered to private New gTLD registries
        pursuant to private contract.

      o

        How can the TMCH provide education services not only for
        trademark owners, but for the registrants and potential
        registrants equally impacted by their services.

      o

        How quickly can a canceled trademark be removed from the TMCH
        database? (note: rejected trademarks and canceled trademarks are
        different, with canceled trademarks involving trademarks that
        have already been issued).

      o

        What is the chilling effect of the 90 day Trademark Claims process?

      o

        Should Tdmk +50 be reversed?


We note that many of the ?potential issues? concerning the Sunrise 
Period, TMCH and Trademark Claims involve the express reversal of 
adopted GNSO policy ? a reversal of the careful compromises negotiated 
by the multi-stakeholders of the GNSO who finalized the URS, TMCH, 
Sunrise and Trademark Claims policies.


**Where that is taking place, we ask the Staff to express note and flag 
such a question.** For example:

      o

        /Should the STI consensus be reversed to allow /TMCH matching
        rules be expanded, e.g. to include plurals, ?marks contained? or
        ?mark+keyword?, and/or common typos of a mark

      o

        /Should the STI consensus be reversed to all Trademark/claims
        period be extended beyond ninety days?


There are clear reasons these policies were reviewed, extensively 
debated and rejected in the first place. Clear information should be 
provided and signals issued when a question asks for the setting aside 
of these important compromises.


         4.

            *PDDRP*

            Given that no proceedings have taken place under the
            Post-Delegation Dispute Resolution Procedures involving
            allegations against an entire registry and its gTLD, we have
            no evidence or record for review and we think it is
            premature for the review of this policy.


Conclusion

Overall, we appreciate the opportunity to comment and ask that our 
suggestions, recommendations and concerns be incorporated into the plan, 
order and issues to be evaluated going forward. Thank


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