After more than four and a half years, the working group reviewing the Rights Protection Mechanisms (RPMs) introduced for the New gTLD Program has reached the important milestone of finalizing its recommendations and submitting the Phase 1 Final Report for adoption. These new gTLD RPMs are the dispute resolution procedures, the Uniform Rapid Suspension (URS) and Trade Mark Post Delegation Dispute Resolution Procedure (PDDRP), and the Trademark Clearinghouse (TMCH), together with the Sunrise and Trademark Claims services that utilize it. Phase 2 of the RPMs Review, likely starting in Q1 2021, will be the long-anticipated review of the Uniform Domain Name Dispute Resolution procedure (UDRP).
All but one of the Phase 1 recommendations have achieved a full consensus of the working group, with the remaining recommendation having a consensus designation, i.e. that most agree with the recommendation, but a small minority disagree. With this very broad level of support, the recommendations can be expected to go forward to implementation.
After such a lengthy process and very high level of support, you might be hoping for some significant improvements to the RPMs framework – have these been delivered? From a brand owner perspective there are some improvements, but not as many, or as substantive, as was hoped-for going into the process. On the other hand, various changes that would have significantly weakened trademark protections, which were being sought by some other parts of the ICANN community, have been resisted. Many of the recommendations therefore reflect a lack of agreement in the working group to make changes, resulting in the retention of the status quo. Others propose tweaks and fixes to existing processes, while others still propose various informational and educational materials to support those who may encounter these RPMs. The designation of consensus, therefore, generally reflects all parties being equally unhappy with, but willing to live with, the outcomes, which could be considered the definition of the ICANN multistalkeholder policy development process.
Various of the of the recommendations for changes, as well as the maintenance of the status quo, do amount to positive outcomes for brand owners, particularly when compared with the alternative, although there are plenty of disappointments too. The highlights are considered below.
Positive Outcomes ?:
- Retention of the TM+50, which allows trademark owners to submit up to 50 “previously abused domain name labels” (i.e. domain names related to, but not necessarily identical to a trademark, which have previously been held to have been registered and used in bad faith either in a UDRP or court proceeding) into the TMCH in connection with an existing TMCH-recorded exact-match mark, for use with the TM Claims service.
- No limitation on the scope of protection for dictionary words just to the goods/services covered by the trademark registration. In other words, Sunrise and Claims services will continue to be available to owners of trademarks that contain dictionary terms, across all TLDs regardless of whether the natural meaning of the gTLD string in which second level names are being sought is related or unrelated to the categories of goods and services for which that trademark is protected. Had this restriction been adopted by the working group it would have had a significant impact on brand owners including, for many, requiring them to submit multiple registrations of the same mark across different goods/services into the TMCH at significantly increased cost. It would also have impacted negatively on registries and registrars, some of whom gave feedback to the working group that such a limitation would add a significant burden to their processes.
- No limitation to exclude marks containing stylisation or device elements from acceptance into the TMCH. This is the aspect where the working group only achieved “consensus” as a small group of participants object and are of the view that the TMCH should be limited just to plan-text marks.
- Inclusion in the Registry Agreement for future new gTLDs of a provision stating that a registry operator shall not operate its TLD in such a way as to have the effect of intentionally circumventing the mandatory RPMs imposed by ICANN or restricting brand owners’ reasonable use of the Sunrise RPM. This is an important recommendation, aimed at reducing the behaviour seen in the 2012 round by a minority of registry operators who set their pricing, policies or processes in such a way as to effectively prevent proper utilisation of the Sunrise protections that had been developed for brand owners. Unfortunately, a proposal to amend the PDDRP to provide a mechanism to enforce this provision, and attempts to give detailed guidance on the types of behaviours that would fall foul of this, were unsuccessful, with the working group unable to agree, so this could be a contentious discussion within the Implementation Review Team (IRT).
- Maintenance of the status quo in keeping the existence and duration of the Sunrise mandatory for non-brand TLDs. Expansion of this brand exemption to other single-registrant TLDs, i.e. closed TLDs for whom only the registry operator is eligible to register second level names for the use by themselves and their affiliates.
- Maintenance of the status quo in keeping the existence and 90-day duration of the mandatory Claims period.
- Exception for dot Brands and other single-registrant TLDs from the requirement to run Claims.
- Steps to be taken to simplify the language of the Claims Notice to make it easier for recipients to understand, and to include links to ICANN’s website where translations of the Claims Notice will be found. Whilst this is a change to benefit potential registrants, it is clearly also in brand owners’ interests for the Claims Notice to be understood and effective.
- In recognition that post-GDPR, only limited registration data (i.e. WHOIS) is publicly-available, the procedure will be amended so that complainants are only expected to include the publicly-available information in their initial Complaint, and there will be an opportunity to amend once this information is given to the URS provider. URS panelists will have a discretion whether to redact the personal details of the registrant from a decision.
- ICANN org should establish a compliance mechanism or mechanisms to ensure that URS providers, registries, and registrars operate in accordance with the URS rules and requirements and fulfil their role and obligations in the URS process, including providing avenues for filing complaints. It was widely felt that, if there are existing compliance mechanisms, they are either inadequate or insufficiently understood. Several working group recommendations relate to issues of perceived non-compliance with aspects of the URS procedure, particularly by some of the URS providers, or at least differences of interpretation as to the obligations and whether they are complied with, which this recommendation should help to address in future.
- Change to the language of the proceedings to mirror the rule in the UDRP. Under the current URS rules the language is by reference to the predominant language of the country of the registrant, but where a privacy/proxy service is used this can often mean a language which has no relevance to the underlying registrant. This will be changed to the language of the registration agreement, as is the case for the UDRP. Whilst this change is more to the benefit of the registrant than the brand owner, it does seem preferable to have standardization between the URS and UDRP.
Trademark Post Delegation Dispute Resolution Procedure
- Clarification that multiple disputes filed by unrelated entities against a single registry operator may be submitted as a joint Complaint. Many working group members believed that this is implicit, given that the test for the PDDRP requires a pattern of trademark-exploiting behavior, but the clarification is helpful. Nevertheless, the test for the PDDRP is extremely difficult to meet, and consequently this mechanism is yet to be used.
Neutral Outcomes ?:
- Changes to the mandatory requirements for the Sunrise Dispute Resolution Process to reflect that the primary mechanism for challenging the trademark record on which a Sunrise registration is based should be the dispute procedure operated by the TMCH, rather than a challenge at the registry level. Registry operators should, however, act in response to such a finding by the TMCH.
- Maintenance of the status quo, whereby the Claims Notice to the potential registrant goes before registration of the name, and the Notice to the trademark owner is sent only once the registration completes. Whilst some trademark owners would prefer to receive this notice before the domain is registered, there were also working group members who argued that the Claims Notice element to the registrant should be dispensed with altogether and only the post-registration notice to the trademark owner retained.
- Clarification that URS providers must maintain a list of their examiners on their website, with links to their decisions and how often they have been appointed to cases, and that examiners’ CVs must be regularly updated. The current URS rules already require published lists of examiners and their qualifications, and that the providers should strive to rotate examiners, which many felt to be more than adequate, but some working group members felt that the obligations require enhancing.
- Providers should publish an effective conflict of interest policy for examiners, which should be enforced. Again, some working group members considered the existing obligations, whereby examiners are required to disclose any conflict before taking on a case, to be inadequate, whilst others considered the existing rules, coupled with the fact that the providers generally do have their own conflict of interest processes, make this recommendation unnecessary.
- Examiners must document their rationale in sufficient detail to explain how decisions have been reached. All working group members would support there being an adequate rationale for decisions. Whilst all working group members agreed that this has been done for the majority of URS cases, there was some difference of opinion as to the number of cases where this standard has not been met and, thus, on the level of detail required for a rationale, bearing in mind that the URS is meant to be a quick, low cost proceeding.
- Obligations to develop and publish educational and informational materials on the URS.
Split Opinion ?:
- Exclusion of Geographical Indications from recordal in the TMCH, and thus from access to the Sunrise and Claims services, except where those GIs are also protected as registered trademarks. Even for those representing IP interests this was a polarizing topic, substantially split along national/regional lines. Those from Europe, and elsewhere, tended to be in favor of retaining the practice adopted by the TMCH operator for the 2012 Round, whereby GIs could be submitted as “marks protected by treaty or statute”; many of those participating from the US opposed this, reflecting the national differences on GIs generally, as did the free speech and domain investor lobbies.
Less Positive Outcomes ?:
- No change to the “exact match” provisions, i.e. no extension of the TMCH, Sunrise and Claims to “mark plus” or “mark contains”, except in the limited context of the TM+50.
- No recommendation that reserved names lists should be published, nor for the development of a formal challenge process, where a trademark-matching name is designated as a premium or reserved name.
- No recommendation was made to adopt the URS as a consensus policy, and thereby applicable to all legacy TLDs including, in particular, .com and .net. Input was sought on this during the public comment period, and there was a great deal of support, but not all working group members were supportive and the group could not agree on a recommendation on this in the limited time available to review public comment input. This topic ought to be revisited during Phase 2.
What Happens Next for the Phase 1 RPMs Recommendations?
The Phase 1 Final Report, containing the recommendations of the working group, has now been sent to the GNSO Council, the cross-community group which has oversight of gTLD policymaking, for a vote. This is due to be considered at the Council’s January meeting. Since all the recommendations reached a full consensus or consensus in the working group there is an expectation that the GNSO approval will be largely a formality.
The approved recommendations will then be submitted to the ICANN Board for adoption. There generally is a further public comment opportunity at this stage, and those who object to the TMCH accepting marks with stylization and device elements may submit comments. Nevertheless, this was an issue considered by the working group and so, again, the Board would be expected to vote to adopt the recommendations.
Once adopted, an IRT, consisting of community volunteers with suitable expertise, will work with staff to implement the policy recommendations. Since there are no new RPMs being recommended, nor are any of the 2012 Round RPMs being removed, and most of the recommendations are in the nature of tweaks and improvements to existing processes, the work of the IRT ought to be reasonably straightforward.
What About Phase 2 of the RPMs Review?
As mentioned above, Phase 2 of the RPMs Review will be the review of the UDRP. Although the Charter for the work on Phase 1 also covers Phase 2 it is widely accepted that lack of clarity and other inadequacies in this Charter contributed to the significant delays of the Phase 1 work. Before work begins in earnest on Phase 2, therefore, the GNSO Council will review and redraft the Charter.
This will also be an opportunity to consider various improvements to the PDP process that the GNSO Council has developed in the meantime, including for Council to give thought to what the most appropriate working group structure would be – generally working groups are open to all, and this will most likely be the case here, but it is possible for working groups to be convened with specific named representatives from the different competing interests, as was the case for the EPDP on gTLD Registration Data. Leadership of the working group will also be particularly important. Phase 1 adopted a structure with three co-chairs taken from competing perspectives. Whilst in theory this allows for balance, in practice it seemed to set an expectation that the co-chairs would not be neutral, and hence needed “balancing”, and made it difficult for them to agree on leadership decisions.
The re-chartering will also be an opportunity to ensure that issues such as whether the URS should be consensus policy, and whether it should form an integrated process with the UDRP are clearly confirmed as within scope.