ICANN and the New Top-Level Domains part 1

American University Washington College of Law
Welcome, Christine Haight Farley, American University
Washington College of Law
We are in the midst of an historic expansion of internet
domain names with more than 1200 new generic top-level domains (“gTLDs”) now
competing with <.com>. This 5000% increase in gTLDs is the biggest change
to the internet’s domain naming system in thirty years (and more are coming
soon!). Accompanying these new gTLDs, are new and innovative–but little
known–IP rights protection mechanisms. These developments could have a
profound impact on the rights of IP owners, domain name registrants, and the
public, and on the architecture of the internet.
Trademark Protections in the New gTLDs
Mary Wong, ICANN
What is the TMCH? Ten years of history. One of the
mechanisms developed at ICANN (not by ICANN necessarily) for the latest round
of expansion of gTLDs.  ICANN has staff
but can be described as a world wide community, always talking about
participants—gov’ts, businesses, lawyers, civil society participants,
academics, other individuals.  Participants
develop policy, not ICANN staff (which would be easier and faster!).  These mechanisms were developed/agreed upon
by a wide variety of interests.
TMCH is not a rights protection mechanism (RPM) as such, but
supports other RPMs in that TM owners submit marks into the TMCH. Those marks
(their existence in a national register somewhere, or b/c they’re protected by
treaty) would be validated by Deloitte, the operator of the TMCH, and you end
up with a global repository supporting Sunrise and Claims (of which more soon).
Over 80% of marks submitted are validated; marks from over 100 jurisdictions;
10,000s have been submitted since establishment 5-6 years ago.  Allows three categories of marks: (1) protected
by a national registration, w/no distinction across countries; (2) marks
validated by a court of law; marks protected by a statute or treaty.
Brian King, MarkMonitor: What did TM owners want from the
TMCH? Assume you’re in-house at Delta Airlines. 
Responsible for brand protection: monitoring for infringement, TM
registries around the world. You may have 100s or 1000s of domain names,
including country code domain names (delta.co.uk), and have to monitor for similar/infringing
names. Might hire MarkMonitor to help w/that. Privacy protections can help
people hide identity of registration. 
ICANN decides to multiply existing gTLDs by a lot.  Now I have to worry about .air, .flight, .sucks,
.porn: concepts Delta doesn’t want the brand associated w/ and may have to
register domain names in merely to preempt other people from doing so.  This is scary and new RPMs help address the
fear.  Sunrise allows Delta to register
before non-TM owners.  TMCH also provides
a notification when someone else registers [an identical domain name] in a new gTLD.
Michael Karanicolas, University of Toronto (delayed due to
weather; I was able to rely on his notes)
Kathy Kleiman introduced Sunrise in his absence. Mandatory
30-day period (some registries expand it to 60 days) that all new top level
domains are required to provide to owners of trademarks, whereby any owner of a
mark which is recorded in the TMCH may pay a special fee to the registry to
register a domain matching their mark before they are opened for general sale.
Why 30 days? And not forever? A balance designed to give
weight to the interests of current trademark owners, but also to the interests
of other potential registrants — the innovators, speakers, entrepreneurs who want
to register in a new gTLD as well.  There
are multiple entities with rights in Delta, for example: dental, educational, fraternity,
etc.  Both Sunrise’s duration and its
limits—requiring an exact match with what the trademark owner has
registered—reflect the desire to balance these competing interests.
Griffin Barnett, Winterfeldt IP Group: Q to address: Purpose
of TMCH for TM owners as it has turned out? 
Keep in mind function of TMs, which is to protect consumers from
cybersquatting/fraud etc.  Benefits to
brand community: operationally, TMCH generally works well.  Sunrise allows defense against phishing.  Two aspects to claims service: one is notice
to brand owner who’s recorded the mark if a domain name matching the
registration is registered, but also during the first 90 days a potential
registrant who tries to register a matching domain name will receive a claims
notice setting out the registered mark with some details. Just a notification:
does not block registration but makes them aware and hopefully they can make an
informed decision.  They might be deterred
based on the knowledge of rights out there.
Q: where are these TMCH registrations coming from? 
Barnett: Deloitte has a report: a lot of these TMCH records
come from the US, Europe.  There are a
number of Asian jurisdictions represented, but majority are US/Europe. Large corporations
tend to be the ones recording multiple marks, but smaller/medium businesses can
use it too.
Wong: Yes; likely to see other countries’ submissions go up
b/c of increasing awareness of these kinds of protections. Most big companies
don’t enter all their brands.
King: it’s not cost effective to enter all TMs, but the
crown jewels deserve TMCH entry. There was an educational period, but people
are aware of this now.
Rebecca Tushnet, Harvard Law School
New legal or quasi legal systems are often set up assuming
that they will be used against, and
not by, bad actors, because that’s
the problem that is most salient before the new system exists.  Unfortunately, online is like offline: bad
actors find ways to game the system whether that’s by disseminating fake news
or by claiming rights far beyond what they actually have, and we need to take
that into account in designing our systems.  Devil is also in the details: when a policy is
written, it may change substantially depending on who is implementing it and
with what expectations.
After Sunrise, there is a Trademark Claims period: when we
talk about Trademark Claims notice, we mean the notice that goes to anyone who
attempts to register a term that is an exact match to a mark in the TMCH. If
they proceed to a final domain name registration then the TMCH mark owner also
gets a notice so that it can take further action if it chooses to do so.  This second notice is called a NORN in case there
weren’t enough acronyms around.  
Top ten queried entries in the TMCH that trigger a Trademark
Notice when there’s a registration attempt: Cloud (which is a registered Swiss
trademark for pens, registered by a trademark lawyer), smart, love, luxury,
nyc, forex, hotel, one, london, abc. Other terms that reporting has identified
as being in the TMCH: Cash, “RICH,” “CREDIT, the word “the,”
VIP, global, hotels, mobile, prime, uk, virtual, “Christmas”, “Insurance”,
“Dating,” “Discount,” Direct, social, construction, BUILD, BET, VACATION, and
WEDDING. Not exactly Microsoft or Xerox, though those are likely also in the
TMCH.
The Trademark Clearinghouse adopts a “lowest bar” approach
to registration, whereby if a mark can be protected under any jurisdiction, and
in any context, it is eligible for inclusion globally under a universal
standard of protection. Doesn’t matter if the mark isn’t eligible for
protection in certain jurisdictions – geographic indicators.  Huge dispute elsewhere in ICANN and in TM law
over whether geographic indications are “marks,” but resolved in implementation,
outside of agreement by participants, in favor of including GIs.  Also doesn’t matter if a word is considered
generic for the relevant goods or services, or for some other goods or
services, in certain jurisdictions. If it’s protected anywhere it’s protected
everywhere for everything.
Moreover, although not by design, the TMCH accepts design marks
– Once a mark has been accepted, it is protected as a word mark without
reference to any distinguishing design features, since domain names are a
text-only medium. So even when the trademark itself does not protect the textual
elements as text, the TMCH will extract the textual elements for protection, as
Deloitte confirmed when we asked them what they’d do with various design and
stylized marks.  Cars by Disney, Music by
Parallel Music Entertainment – all eligible as word marks for trademark
protection.
For example: the American Physical Society publishes a
journal called, naturally enough, “Physics”. Their US registration for the logo
used on that publication was required to disclaim the word “Physics”. However,
since the EU does not have an explicit disclaimer procedure, even though the
mark is just as limited in the EU—it is a figurative mark—they used their
figurative EU registration to get their TMCH entry for the word “Physics” per
se.
Q: Implementation v. policy development.
Wong: One of the most fascinating aspects of the job is
looking how a policy is written, which goes through multistakeholder
consultation process, a little bit like treaty negotiations.  The output might be fairly general and that’s
what happened. The original policy recommendations were really really general.
Protect legal rights of others.  Everything we’re talking about today was
developed as minimum protections during implementation of the very general
policy recommendation. Had to be turned into something workable.  Now there’s a policy working group looking at
all of this and will hopefully develop policy recommendations that can be
implemented.  Where things go too far
they can be restrained, where not far enough extended.
Q: was this issue discussed in policy development then?
Wong: there was a very general policy; with respect to specific
points about GIs and text, the group didn’t list all the different things that
could or couldn’t be protected, but during implementation it was made very
explicit that no jurisdiction should be excluded.  It was felt that neither ICANN nor Deloitte as
the validator are in a position to determine which marks are protected
trademarks.  So the rules were made
fairly generic.
RT: Where there are gray areas, to say “we’re not making a
judgment” actually admits of two approaches: you can say it’s in or it’s
out.  Both of those approaches are “nonjudgmental”—and
you really could have thought that “all TMs are in” clearly excluded GIs
because there’s an entire class of people who think that GIs aren’t trademarks
and have a different ordinal priority when it comes to rights conflicts. And
where you have already a really expansive definition of rights (protected
anywhere, protected everywhere; registered for any good, covered for all
goods/services) then further expansive decisions have collateral consequences.
Barnett: Different jurisdictions approach things from different
standpoints, especially with respect to GIs; the clearinghouse was intended as
a baseline so no one would be left behind by the way they were accepting
certain rights. Concrete hypothetical: if Italy protects parmesan as a GI in national
law, based on the underlying concept: we did discuss that rights based in
national law should be protected.  [“Rights”
is not “trademark rights” which was the actual language. Rights of publicity is
another easy example where rights but not TM rights exist.]  There are a lot of nonspecific new gTLDs but
you still might encounter consumer protection issues e.g., for .web, .online, .llc.
Can’t tie Delta Airlines brand to exclude those general websites.  On design marks: where there’s a textual
element w/stylization—going back to policy rationale, this took expansive
approach b/c the underlying approach is to protect consumers against
confusingly similar uses in the DNS.  If
someone registered cars.whatever and uses it in bad faith to target Disney’s
Cars, it’s appropriate to have that in the TMCH for Sunrise and Claims. It’s up
to the registrant to make an informed decision.
Kleiman: Rules in consensus policy adopted by ICANN.  Unanimously adopted by the GNSO council and
Board. Two things it says: the name of the RPM should be the TMCH (not “IP
clearinghouse as proposed”) to signify that only TMs should be included. Should
be required to include “text marks.”  As
a parenthesis: design marks provide protection for letters and words only in
the context of the design or logo and the group was under a mandate not to
expand trademark rights.  We also debated
the secrecy of the TMCH and decided against it: the notice function is
important.  What happened? This goes way
beyond implementation: they accepted GIs, which WIPO says aren’t TMs; they
accepted design marks; they decided to make the TMCH secret. Stopped making
sense of “implementation.”
Wong: The implementation that Wong described started in
2008, and the policy was “protect the legal rights of others.” Kleiman’s team
(quoted) happened during implementation. Took 4-5 years and there were multiple
discussions. Coming back to consensus-building, at each step, all proposals
were put out for feedback from stakeholders. Where we ended up was the Applicant
Guidebook, reflecting a consolidated history of 5 years of implementation
stemming from v broad policy. Not saying we got it right or wrong but that’s
where we ended.
King: We protect TMs from any jurisdiction and not just from
the US.  No one country’s law rules the
internet, so it’s important for this community to allow TM registrations under
the laws of all jurisdictions.

Barnett: Expanding rights: legit brand owners don’t want people having rights
they don’t have. Consumer confusion and bad faith are the ultimate tests. If cars.whatever
is confusingly similar and used and bad faith it shouldn’t be ok. Depending on
the use, Disney might win a UDRP case.
RT: Letting everything in is a great way to get much, much
further from the consumer protection basis of trademark. And every axis on
which you decide to allow more in has effects on how much further away from protecting
consumers you are. We’re already abstracting away from national rights and from
goods and services.  Cars is a great
example b/c the TMCH/Sunrise have already abstracted away from consumer
confusion and bad faith.  How many cars.whatever
websites would you have to look at before you found one that was infringing? (URS/UDRP
is the right solution for the bad faith ones.) 
And they’re all impacted by Sunrise and Claims.
Q: Global database of recordals would be really useful. So
let’s talk secrecy.
King: Putting people on notice: TMCH does put potential new
domain name owners on notice that they may infringe if they proceed.  That notice can then be evidence in a
potential case.  90% bounce rate of those
who put a domain in their cart, received a notice, then didn’t proceed to final
registration.  That’s great for
deterrence! TM is a clear way to cry foul but it’s impractical to go to federal
court in every infringement case. 
RT: Abandonment rates are really unclear: 90% rate might be mainly
for queries by automated programs, but we really don’t know. Also, that 90% rate
refers to queries for cloud, hotel, one, london, abc—the idea that they were
planning on being cybersquatters is simply not plausible. We were unable to
survey actual cybersquatters and it’s hard for me to believe that someone who
wants a phishing site is going to be deterred by a notice, but better data
might convince me otherwise; the point is that making claims about deterrence
is simply not supported by the current data. 
We were able to survey ordinary registrants and their understanding of
the notice was not much better than chance. 
Barnett: there are issues around gaming the register. We
want a clean TMCH as much as we want a clean PTO register.  There is a mechanism that allows challenges
to records in the clearinghouse—you can challenge a denial if you’re a TM
owner, or a third party can challenge [if they learn of it]. If you’re
attempting to register in good faith, then there is a mechanism to get that
deactivated.
Confidentiality: there’s conflicting views on transparency.
The idea of keeping it confidential is important b/c TM owners make strategic
decisions. That reflects information from the brand owner; don’t want to
provide road map to what gaps exist.
Farley: people monitor other countries’ registration systems
for information already. 
[How would this “abuse of transparency” work exactly?  The abuse scenario is that they look at the
TMCH, look at the PTO’s registration database, and register the domain names
that aren’t in both? There is zero evidence that this is how anyone does
anything, and zero explanation how knowing from the TMCH that Coca Cola might possibly
consider Coke a more valuable mark than Vault would change anyone’s behavior.  Moreover, trying to register the domain names
would itself reveal the relevant information to the putative abuser.]
Phil Corwin, working group co-chair at ICANN.  (1) Confidential, but if I want to know whether
ACME has registered, I can simply go during the first 90 days and find out whether
it’s recorded.  We suspect that some
parties have done that. [So the point of the secrecy is ….?]  We don’t know how many queries were like
this. (2) Domain names can be trademarked, as in booking.com.  (3) We are talking here about new gTLD policy
not consensus policy: to get that through ICANN you need consensus—unanimous or
near-unanimous; 80% support isn’t going to be good enough. [Clarification:
consensus policy would mean that Sunrise, Claims, URS would all be applied to
every gTLD, including the legacy TLDs like .com.]
RT: [Great points; (3) means that policy decisions made in
implementation are likely to stick.]
Q: a brand is not a TM. 
Delta.sex isn’t a problem if it isn’t confusing.  You don’t have rights against it even if you
don’t like it.
Q from PTO person: GIs are not marks protected by
statute/treaty. Way back when, we were thinking about Olympics, Red Cross etc. for
those categories.  Has been handed her
head for conflating GIs with marks—offends Europeans/WIPO. However, GIs can be
protected as trademarks whether unregistered or registered if they are serving
as TMs. This is a burning issue for the PTO. We are very concerned that when it
says “marks,” “TMCH,” we want to be talking about marks and not GIs.  Is this still on the table with the working
group at ICANN?
Q: how does GDPR affect rights protection mechanisms as we revamp
WHOIS in a different PDP (policy development group)?
Michael Karanicolas: Manual input has determined some of the
content of the TMCH, e.g., inclusion of Christmas and the like. Not a great
oversight mechanism, though. Hard to get a broad understanding of how the
system is working, which is vital to accountability and overall assessment: is
abuse widespread or limited?  Corwin
mentioned that if there isn’t consensus the status quo prevails, which is particularly
problematic where the implementation drifted from the rules as originally
designed, specifically for accepting design marks [and GIs].  Turns the original rules on their head.  Allows beneficiaries to block “consensus” even
though that was the original consensus. Leads to larger Qs about ICANN and its
role in internet governance. Transparency is fundamental to what ICANN does.  And it’s fundamentally problematic when used
to maximize rights beyond what TM would grant (global rights, goods/services).
Wong: Yes, it is under consideration that GIs would be treated
differently. Part of our discussions.  “Mark
protected by statute or treaty” but the word mark isn’t defined.  May not be about whether something is a GI
but whether it is a mark.  [But if GIs
are not trademarks … I believe my logic class had something to say about this.]
Barnett: the wording of the claims notice can be improved,
we all agree. 
King: “cloud” example—be careful b/c one of the most
valuable TMs in the world is Apple. 
[Though note it’s not at the top of the list of those queried in the
TMCH the way “cloud” is, so a bit of a red herring, no pun intended.]  GDPR makes things a lot harder.

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