Dissecting the strawman: ICANN’s 11th Hour Trademark policy negotiations

Guest blog Robin Gross, Chair of ICANN’s Noncommercial Stakeholders Group (NCSG)

On November 15-16 2012, ICANN organized a meeting in Los Angeles to consider the implementation of the Trademark Clearinghouse for new top level domains. Pressure by trademark and business interests, however, expanded the scope of the meeting to consider 8 demands to strengthen trademark protections in new top level domains. The letter with the 8 demands was sent to the ICANN board and senior staff on 16 October, 2012.  I attended the policy meeting in person on 15 November, and participated in part of the discussion on 16 November via telephone.  Kathy Kleiman also participated in the discussion via telephone on behalf of noncommercial interests on the 15^th and the latter part of the 16th.  Below is my personal evaluation of the meeting and my initial reactions to the output of the meeting, pending further discussion with the NCSG Policy Committee.

The Good: Dangerous Blocking Proposal was Defeated

The good news is that the most dangerous proposal was defeated.  The IPC-BC’s proposal to block Internet domain name registrations based on trademarks was unequivocally rejected by the meeting participants.  Given the lack of any support outside the IPC-BC proponents, the participants did not include the blocking mechanism as a possible policy at this time.

A wide range of participants objected to the registration blocking proposal for a variety of reasons. Ms. Kleiman raised strong procedural concerns about introducing blocking after so much of ICANN’s time, attention and energy had already been spent on a fervent debate on the topic.  She then raised the deep substantive concerns of allowing a trademark owner to reserve the right to exclude trademarked names across all 1000+ new gTLDs, regardless of their applicability to the trademark’s registered categories of goods and services.  It is a point that NCSG has made many times, and one first developed by Ms. Kleiman and Dr. Konstantinos Komaitis in 2008 in response to the Globally Protected Marks List.

Other members of the community also rejected the blocking policy proposal.  Registries raised concerns about the blocking policy’s presumption of guilt on the part of Internet users, which violate well-established due process protections.  Registrars flagged the proposal’s danger to the health and growth of the Internet and reminded participants of the community’s responsibility to develop policies that do not cripple the Internet.  At-Large representatives also argued that the blocking proposal was an inappropriate policy change that should not be given immediate consideration. So the good news is that the dangerous domain name registration blocking proposal was stopped (for now).

The Bad: A Strawman Based on a Stacked Deck

The bad news is that the meeting seems to have produced a set of policy proposals, called the “strawman model.” Once again, ICANN is abandoning its established policy development process for no reason other than that an organized special interest groups wants it to.  ICANN staff’s “strawman model” should not be understood as something that participants agreed to, but is rather a discussion item for possible consideration based on executive decisions.  Some parts of the strawman are indeed technical implementation details, and NCSG has no problem with those parts.  But other parts propose substantive changes to existing policy and should not be accepted by the community and not be allowed to over-ride the legitimate policy development process. (ICANN CEO Fadi Chehadi’s blog post on the meeting, in which he claims that “they were not policy-making meetings” can be found here.)

The strawman was discussed at the meeting many hours after the period that had been set aside for policy discussions, thus the discussions occurred after many participants had  left the meeting (including me). This exacerbated the imbalance of representatives providing input into the strawman proposals. There were 12 Commercial Stakeholder Group representatives to 1 NCSG representative on the phone in the middle of the night. A straw poll based on imbalanced inputs will obviously create imbalanced outputs. Additionally, the strawman proposals could apply just as equally to .com as they would to the new domain names, so its impact could be of far greater significance than is generally understood at first blush.

The Ugly: ICANN is Developing Policy Outside of Proper GNSO Process

The most troubling concern is that the Intellectual Property and Business Constituencies keep insisting on renegotiating policies that were already been agreed upon via ICANN’s vaunted “bottom up process.” We have to learn to respect the proper policy development process and the resulting policy compromises and consensus positions reached by the Generic Names Supporting Organization.  At the L.A. meeting, even ICANN staff admitted that every IPC-BC proposal being considered was a policy change that should be based on some form of formal policy development process.  Yet somehow the proposals were still in play for negotiation and ultimately executive decision. ICANN staff produced a new set of changes to the policies currently contained in the Applicant Guidebook: the “strawman model”.  Private negotiations among an imbalanced ad-hoc group to re-open well-settled policy matters is not the way to create legitimate policy. And even though it could have been much worse – the blocking proposal could have been accepted – the fact that ICANN has not learned that it cannot and should not make ad hoc policy changes outside of proper process is deeply troubling.

We have the same obligations to accountability to the community, transparency of process, and equality of participation among impacted stakeholders in the development of policy at intercessional meetings that we have at other policy development meetings.  Neither executive decisions nor private negotiations among select parties fulfill ICANN’s commitment to the bottom-up multi-stakeholder policy development process.

What Now?  Only Accept Strawman’s Technical Implementation Details

The ICANN community needs to put this matter to bed. It should disregard those parts of the strawman model that re-open previously settled policy matters or attempt to create new policies, while accepting those that are only technical implementation details.

The new proposal to expand the scope of the trademark claims service to include exact matches plus 50 variations of a trademark is a significant policy shift. It expands trademark holders rights. This should require a legitimate policy development process using the GNSO’s carefully balanced representation and open process. Other big policy concessions to the IPC-BC in the strawman include the creation of a new “Claims 2” policy, and policies to extend and increase the legal liability of domain name registrants against trademark claims.  The creation of entirely new policies that impact the rights of domain name registrants and increase their risks should require a policy development process so that registrants and other interests can be fully represented.  In contrast, minor increases in the duration of Trademark Claims or adding a reasonable notice period to the Sunrise process are not terribly problematic and would not require a PDP to implement.

Since the strawman is not the outcome of an agreed consensus among all impacted stakeholders, the proposals must be dissected to sort-out implementation from new policy.

Dissecting the Strawman (if it only had a brain…):

Point 1.  All new gTLD operators will publish the dates and requirements of their sunrise periods at least 30 days in advance.  When combined with the existing (30-day) sunrise period, this supports the goal of enabling rights holders to anticipate and prepare for upcoming launches.

NCSG Response: No Problem.  Reasonable technical implementation detail to publish sunrise periods in advance.

Point 2.  A Trademark Claims period, as described in the Applicant Guidebook, will take place for 90 days.  During this “Claims 1″ period, a person attempting to register a domain name matching a Clearinghouse record will be shown a Claims notice (as included in the Applicant Guidebook) showing the relevant mark information, and must acknowledge the notice to proceed.  If the domain name is registered, the relevant rightsholders will receive notice of the registration.

NCSG Response: Generally a reasonable technical implementation detail, but there is some concern.  The duration of the claims period is a change from what is stated in the Guidebook, which provides only 60 days, but increasing to 90 days does not seem at first blush to be a significant substantive change.  However, since registrants are required to acknowledge receipt of notice for an extended period of time, it does increase the potential for liability, which is worrisome.

Point 3.  Rights holders will have the option to pay an additional fee for inclusion of a Clearinghouse record in a “Claims 2″ service where, for an additional 6-12 months, anyone attempting to register a domain name matching the record would be shown a Claims notice indicating that the name matches a record in the Clearinghouse (but not necessarily displaying the actual Claims data).  This notice will also provide a description of the rights and responsibilities of the registrant and will incorporate a form of educational add-on to help propagate information on the role of trademarks and develop more informed consumers in the registration process.

NCSG Response: NCSG objects to this. It is an entirely new policy created outside of the appropriate GNSO policy process.  NCSG also objects on substantive grounds, because this policy creates greater legal liability for Internet users. Users will be deemed to have received “notice of infringement” for legal purposes upon sending of such additional notice.  Rights and responsibilities are not uniform globally and may cause confusion or misinformation, so any “educational” value of additional notice does not match the significance of increased legal liability for registrants of turning innocent infringers into knowing and willful infringers.  The imposition of criminal sanctions, additional monetary damages and other serious legal penalties are triggered for registrants who are sent such a notice and thus courts will deem them as having “knowledge” of their infringement.  These non-trivial considerations must be worked through as part of a proper policy development process by the entire community.  Creating an entirely new “Claims 2” policy is a significant policy change that should go through a proper policy development process within the GNSO.

Point 4.  Where there are domain labels that have been found to be the subject of previous abusive registrations (e.g., as a result of a UDRP or court proceeding), a limited number (up to 50) of these may be added to a Clearinghouse record (i.e., these names would be mapped to an existing record for which the trademark has already been verified by the Clearinghouse). Attempts to register these as domain names will generate the Claims notices as well as the notices to the rights holder.

NCSG Response:  NCSG objects to this major policy change as it disregards the role of the GNSO as the policy development instrument at ICANN.  Substantively this policy change significantly expands trademark holders rights beyond what trademark law permits and beyond what is in the Applicant Guidebook.  The policy expands trademark holders’ rights at the expense of other legitimate interests, including noncommercial speech.  Just because one party infringes a trademark does not mean that all subsequent uses of that word by other parties and in entirely different contexts are presumed infringements. But this misguided policy presumes just that.  The proposal is also a significant policy change because it expands the scope of trademark claims from exact matches of a trademark to up to 50 variations.  That’s a big change to existing policy.  Criticism of brands and companies as will other types of noncommercial lawful uses of words in domain names would be chilled by this policy proposal.

Point 5.  Possible blocking mechanisms were discussed, but were not included in the strawman model.

NCSG Response: NCSG agrees with other participants that blocking of domain name registration based on trademarks as proposed by IPC-BC is dangerous to the health and growth of the Internet.  Obviously the creation of an entirely new blocking mechanism for domain names is a major policy change, inappropriate as an outcome of an informal and imbalanced meeting such as this, and was roundly rejected as such.

An official NCSG response to the IPC-BC proposals can be found here.