[PC-NCSG] draft UDRP/RPM Comments

[Stephanie Perrin]

As requested, I have given this excellent document a light edit in 
markup.  This is certainly not my area of expertise, but it strikes me 
as extremely important.  I invite those with greater knowledge than I of 
UDRP matters to have a look at this document, make sure I did not alter 
the meaning as I sought to correct typos etc, and see if more should be 
added.  I think Kathy has definitely given them something to chew on 
here, though, it looks excellent to me.  We must make sure we get it in 
on time (deadline Monday). I am adding Monika to the cc as I know that 
she has done work on the UDRP, as well as Wendy and Robin since I am not 
sure they are on the NCSG-policy list.  The link for the report is here:
https://www.icann.org/public-comments/rpm-prelim-issue-2015-10-09-en
kind regards
Stephanie Perrin

On 2015-11-28 10:58, Kathy Kleiman wrote:
> 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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