The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 90-minute webinar with interactive Q&A Domain Name Rights Protection Mechanisms & ICANN Developments Opportunities and Risks of RPMs, Sunrise and Trademark Claims Services Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific TUESDAY, NOVEMBER 14, 2017 Wendy Larson, Partner, Pirkey Barber, Austin, Texas Paul D. McGrady, Jr., Partner, Winston & Strawn, Chicago Susan Payne, Head of Legal Policy, Valideus, London, United Kingdom Todd D. Williams, Senior Counsel, Turner Broadcasting System, Atlanta
Transcript
The audio portion of the conference may be accessed via the telephone or by using your computer's
speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10.
Presenting a live 90-minute webinar with interactive Q&A
Domain Name Rights Protection
Mechanisms & ICANN Developments Opportunities and Risks of RPMs, Sunrise and Trademark Claims Services
Rights Protection Mechanisms Before the new gTLD launch
Uniform Domain-
name dispute-
Resolution Policy
(UDRP)
Anti-
Cybersquatting
Consumer
Protection Act
(ACPA)
EST. 1999 EST. 1999
6
ACPA 15 U.S.C. §1125(d)
• The plaintiff must show that the defendant, with a “bad faith intent to profit” from the plaintiff’s mark, “register[ed], traffic[ked] in, or use[d] a domain name” that is “identical or confusingly similar to that mark”
• A mark owner may pursue a domain name in rem • Statutory damages between $1,000 -- $100,000
per domain name are available, “as the court considers just.” 15 USC §1117(d).
7
The UDRP
• Policy applies to .com, .net, .org domain names, among many other legacy TLDs including certain ccTLDs (e.g., .CO and .TV), as well as the new gTLDs. Different, but similar policies generally apply to certain other TLDs.
• A complainant must show: (1) the domain name is identical or confusingly similar to a mark in which the complainant has rights; (2) the respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.
8
Rights Protection Mechanisms Introduced with the new gTLD launch
The
Clearinghouse
(TMCH)
Legal Rights
Objections
(LRO)
Uniform Rapid
Suspension
(URS)
Post
Delegation
Dispute
Resolution
Proceeding
(PDDRP)
9
Legal Rights Objections
• WIPO was the exclusive dispute resolution
service provider for LROs.
• The window for filing an LRO was open for nine
months and closed in March 2013.
• There were three ways a trademark owner could
prevail in an LRO.
10
• 69 compliant LROs were filed.
• Four LROs were upheld and 59 were rejected on the merits.
• One objection was deemed successful because
the respondent did not timely respond. Five objections were terminated without a decision, three of those due to the withdrawal of the subject applications, the others likely as a result of settlements.
• In sum, nearly 94% of the LROs that reached a decision on the merits were rejected.
Legal Rights Objections
11
Intended benefits: • advantages in the “Sunrise period” of the
launching of each of the new gTLDs;
• notice to a would-be registrant of the markowner’s rights when he/she attempted to register a name that matches a trademark in The Clearinghouse (for 90 days- the “Trademark Claims period”); and
• notice to the trademark owner that someone registered a domain name with their mark in it (90 days).
The Clearinghouse
12
Sunrise controversies…
13
Uniform Rapid Suspension
• Elements are very similar to UDRP
• Cheaper, faster
• Higher burden of proof
• Remedy is suspension
• Only applicable to new gTLDs
• Over 800 complaints filed (775 with The Forum, 31
with Asian Domain Name Dispute Resolution Centre)
• Complainant successful in over 90% of
decisions
14
Post Delegation Dispute Resolution Procedure
A trademark owner must demonstrate, by clear and convincing
evidence:
a) affirmative conduct by a registry at the top level that
infringes a trademark; and/or
b) at the second level, affirmative conduct by a registry
that amounts to a substantial pattern or practice of
specific bad-faith intent by the registry to profit from
the sale of domain names that infringe trademark
rights.
• Variety of Recommended Remedies
• “Recommendation” to ICANN
15
16
ICANN’S RPM REVIEW AND OTHER DEVELOPMENTS FROM ABU DHABI
SUSAN PAYNE, HEAD OF LEGAL POLICY, VALIDEUS LTD
VALIDEUS.COM
What we will cover
17
How did we get here Structure of the review & working group processes What have we done to date & what are we currently working on:
Other live issues at ICANN which impact on IP owners: Recommendations from the Competition, Consumer Trust and Consumer Choice Review GDPR and the impact on WHOIS
How did we get here?
18
October 2011: UDRP Final Issue Report: Not before URS in operation for at least 18 months
December 2011: GNSO Council requested Issue Report on state of all RPMs 18 months after delegation of first New gTLD
September 2015: Final Staff Report on RPMs published January 2016: Final Issue Report submitted to GNSO Council February 2016: PDP initiated; request for participants April 2016: First meeting of the PDP working group
Current timeline: Final Report on Phase 1 approx. August 2018 – extremely ambitious Phase 2 – Uniform Domain Name Dispute Resolution Policy (UDRP)
Working Group Process
20
Approach being adopted: Where is the evidence of harm / problem to be fixed?
Use of sub teams for “first-pass”:
• Initial review of the issues identified in Charter: revision for sense and bias
• Identify data requirements and possible sources to inform review Sub teams for TMCH, Sunrise, Claims, Additional Marketplace RPMs, Data Gathering
All sub team output reviewed and agreed by full WG
Workl PDDRP
21
April – November 2016 No PDDRP cases to date Issues considered included:
• Why has it not been used? Not necessarily indicative of failure • Would pre-action mediation be beneficial? • Can multiple claimants consolidate / join forces against a single
defendant? Preview of the battle on URS and UDRP Sought feedback from brand owners and polled WG members
TMCH
22
Topics subject to particular debate, and use of strawperson proposals: How are (and should) design marks be handled:
• Challenge to agree terminology • Should the TMCH only accept trademarks registered as plain block
capitals? Stylised script? Word plus device element? • What about disclaimers?
Should TMCH accept geographical indications & designations of origin: • Was this what was intended by “marks protected by treaty or
statute”? • Only if also registered as a trademark?
Should the matching rules be expanded for Trademark Claims? i.e. mark +
Sunrise & Claims
23
Request made to GNSO Council for resource to seek to gather extensive data Includes professional survey(s) of various target groups:
• Registries; registrars; trademark owners; other domain name registrants & potential registrants; public interest groups and trade associations
• Both quantitative and anecdotal evidence
Data Sub Team working to provide input and guidance into the RFP for a survey supplier
Sunrise & Claims
24
Topics the WG hopes the surveys will inform include:
• Impact of Sunrise and premium pricing, and use of reserved names, on TM owners’ ability to participate in Sunrise
• Should Sunrise length be standardised? Should some types of registry have special rules, e.g. community or city TLDs?
• Is the Claims service having the intended effect of deterring bad faith registrations? Are there unintended consequences, e.g. deterring good faith ones?
• Is TM gaming a significant problem and how do we address this?
Additional Marketplace RPMs
25
Views divided over WG’s remit on non-ICANN mandated RPMs: • WG is entitled to review voluntary registry offerings and opine as to their
operation; or • Consideration only relevant insofar as they impact on the overall
landscape in which the mandatory RPMs operate Questions WG will consider relate to: • What non-mandated RPMs exist • What are the rules governing them and how readily can these rules be
found by the public • What, if any, impact have they had on the utilisation of mandatory RPMs
URS
26
Started to consider URS in Abu Dhabi: • Background/educational session for WG members • Session considering the current Charter questions and seeking
community feedback on URS experiences
Next step likely to be convening a sub team to: • Review/edit Charter questions for sense and bias • Identify any data requirements • Identify potential data sources
Likely to be a testing ground on both sides for the arguments on the UDRP
? URS: Possible Improvements?
27
Changing the burden of proof from clear and convincing to preponderance of the evidence Improving the remedy: perpetual block, transfer, or right of first refusal? A respondents’ fee in all cases, not just for 15+ names Loser pays Judgment in default
CCT-RT Recommendations
28
Competition, Consumer Trust, and Consumer Choice Review: • Extent to which the New gTLD Program has promoted these • Effectiveness of application and evaluation process • Effectiveness of safeguards introduced to mitigate issues – including
RPMs Anticipated recommendations: • Impact Study on the cost of new gTLDs to brand owners: repeat every 18-
24 months • Full review of the URS - might be met by work of the RPMs PDP • Cost-benefit analysis of the TMCH - might be met by the work of the
RPMs PDP
Impact of GDPR on WHOIS
29
European General Data Protection Regulation • Becomes enforceable 25 May 2018 • Maximum penalties are severe: 20,000,000 EUR/up to 4% turnover • Impacts on contractual obligations of Registries and Registrars to provide
public WHOIS • Given the penalties, they will choose breach of their ICANN contract
rather than running the risk • Concern at implications for Law Enforcement and IP Protection
BUT: • Only those based in EU; or based outside the EU but targeting EU subjects • Personal data (e.g. name and address of natural persons) • Not corporate information unless this can identify a legal person
Impact of GDPR on WHOIS
30
So: • Claims that WHOIS must “go dark” are an exaggeration • Some changes to WHOIS seem inevitable • Precedent is available for a longer-term solution: many EU ccTLD
operators offer WHOIS and comply with the data laws ICANN’s announced interim position: • Moratorium on contractual compliance action • Contracted party must share its proposed model with ICANN • Include explanation of how the model reconciles contract obligations
with GDPR provisions • Wholesale abandonment of WHOIS is not an acceptable model
Susan Payne Head of Legal Policy, Valideus Ltd [email protected] +44 207 421 8299 valideus.com
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