[PC-NCSG] draft UDRP/RPM Comments

[Kathy Kleiman]

Stephanie's edits are great. They are still highlighted in the attached 
document. If you could review these comments today, we would appreciate 
it - and get them ready to submit tomorrow.
Sorry for the delay, but PPSAI has been busy too!
Best,
Kathy

On 11/28/2015 8:50 PM, Stephanie Perrin wrote:
> 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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