domain name rights protection mechanisms & icann...

Domain Name Rights Protection Mechanisms

& ICANN DevelopmentsOpportunities and Risks of RPMs, Sunrise and Trademark Claims Services

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WEDNESDAY, JUNE 5, 2019

Presenting a live 90-minute webinar with interactive Q&A

Paul D. McGrady, Jr., Partner, Taft Stettinius & Hollister, Chicago

Todd D. Williams, Assistant General Counsel, Turner Broadcasting System, Atlanta

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Domain Name Rights Protection

Mechanisms & ICANN Developments

Todd D. Williams

Assistant General Counsel

P: 404-827-2234

[email protected]

Paul D. McGrady / Partner

Taft Stettinius & Hollister LLP

111 E. Wacker Drive, Suite 2800

Chicago, Illinois 60601-3713

Tel: 312.527.4000 • Fax: 312.754.2354

[email protected] • Cell: 312.882.5020

https://www.sp-04.com/r.php?products/tlfp3chkra?utm_campaign=tlfp3chkra&utm_medium=email&utm_content=&utm_source=faculty&pid=&trk=ZDFCA&mid=&rd=sp04

mailto:[email protected]

mailto:[email protected]

Today, we will dive into the Rights Protection Mechanisms

(RPMs) below:

• UDRP

• URS

• Nexus Dispute Policies

• Use Based Dispute Policies

• Sunrise

• Claims

• UDRP and UDRP-like Policies for ccTLDs

Following that, we will take a look at the outcomes from the most

recent ICANN meeting in Kobe and look ahead to this month’s

meeting in Marrakech.

6

Burden of Proof

The overriding objective of the Policy is to curb the abusive registration of domain names in

circumstances where the registrant is seeking to profit from and exploit the trademark of another.

In accordance with that objective, a complainant under the UDRP initially has the burden to assert

that (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 the domain name; (3) the domain

name was registered in bad faith; and (4) the domain name has been used in bad faith.

As explained in Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd.,“The threshold for making

such a showing is quite low, since it is difficult to produce evidence to support a negative statement … . These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.” WIPO panelists have indicated the same,

especially in relationship to the burden associated with proving Complainant’s rights to a mark that is

confusingly similar to the domain name in dispute.

Once a prima facie case has been set forth, the burden then shifts to the Respondent to refute the

case.

1-2 McGrady on Domain Names § 2.100 (2015)

UDRP

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The UDRP has also been adopted by certain managers of country code Top Level Domains

(ccTLDs).


To date, there are around 50 such ccTLDs.

Other ICANN Approved Dispute Policies

In addition to the UDRP, some of these gTLDs are also subject to other ICANN-adopted

dispute policies. For example, the <.biz> domain name is subject to the RDRP. Counsel

should review the relevant individual chapter for the gTLD in question.


Importantly this Policy does not require a showing of bad faith.

Voluntary Adoption of the UDRP by ccTLDs

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Non-ICANN, UDRP-like Dispute Policies for ccTLDs

ccTLD registries are free to adopt, or not adopt, dispute policies as they see fit. Notable non-

adopters are Germany (.de) and Russia (.ru and .su). The .us ccTLD has two informal

dispute policies. One is similar to the UDRP and one is not.

The usDRP is a UDRP-like policy. There are two primary, but important, differences between

the UDRP and the usDRP. These are (1) the relaxation of the bad faith requirement, which

under the usDRP is bad faith registration OR bad faith use (the UDRP requires both bad faith

registration and bad faith use); and (2) the addition of a fourth defense, namely that the

registrant owns or is the “beneficiary” of a trademark which corresponds exactly to the domain

name in dispute.


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Un-UDRP-like ccTLD Dispute Polices.

The second .us ccTLD dispute policy is the usNDP.

The usNDP was implemented to allow a party to pursue a complaint for cancellation against a registrant

which it believes has not complied with the Nexus requirements. The complainant need not show rights to

the domain name nor bad faith on the part of the registrant. In order to obtain cancellation, a complainant

must allege (and the respondent must fail to rebut) one of the following claims about the registrant:

i. You are not (a) a United States citizen, (b) a permanent resident of the United States of America or any of

its possessions or territories, or (c) primarily domiciled in the United States of America or any of its

possessions; or

ii. You are not a United States entity or organization that is (a) incorporated within one of the fifty (50) U.S.

states, the District of Columbia, or any of the United States possessions or territories, or (b) organized or

otherwise constituted under the laws of a state of the United States of America, the District of Columbia or

any of its possessions or territories (including a federal, state, or local government of the United States or a

political subdivision thereof, and non-commercial organizations based in the United States); or

iii. You are not a foreign entity (including an individual) or organization that has a bona fide presence in the

United States of America. In order to have a “bona fide presence”, you must have real and substantial lawful

connections with, or lawful activities in, the United States of America.


10

Cautionary Note When Registering ccTLDs or using a ccTLD Dispute Policy:

Be Aware of Jurisdictional Issues

The usNDP is a prime example of jurisdictional rules, differing significantly from the UDRP,

appearing in dispute policies:

Unlike the UDRP which allows for a “mutual jurisdiction” in the courts where either the

registrant or registrar are located (regardless in what country such courts are located), the

usNDP restricts the “mutual jurisdictions” as follows:

Mutual Jurisdiction means a court jurisdiction in the United States at the location of either (a)

the principal office of the Registrar of the domain name in question, or (b) the domain name

holder’s address as shown for the registration of the domain name in Registrar’s Whois

database at the time a complaint is submitted to a Provider. If neither (a) or (b) are located

within the United States, then Mutual Jurisdiction shall lie in solely in the Commonwealth of

Virginia.


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URS

The URS is, in effect, a speedier UDRP, having essentially the same elements but with

different remedies and procedural time periods. The UDRP can result in a transfer or

cancellation order, whereas the only remedy available under the URS is a suspension

order requiring the domain name to be locked down and suspended from use for the

remainder of its term or until an order on “appeal” requires otherwise. The URS process is

supposed to be several days faster than the UDRP process. The genius of the proposal is

that it does not require a brand owner to amass large portfolios of domain names that were

of value to cybersquatters but are of little or no value to the brand owner.


Sunrise

A sunrise must be run in conjunction with the Trademarks Clearinghouse, which stores

and validates trademark data submitted by the brand owners wishing to obtain such

sunrise registrations. Once a mark is vetted by the Trademarks Clearinghouse, it is able

to serve as a basis for any Sunrise application that is based upon relevant pre-existing

trademark rights.

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Claims Notice

A registry must offer an IP claims service during the first sixty days of the general launch of the

domain name in conjunction with a Trademarks Clearinghouse. An IP claim is triggered when an

applicant for a second-level domain name applied for a domain name that was identical to a

trademark found in the Trademarks Clearinghouse (which validates mark and gathers evidence of

their current use). A notice is sent to the applicant prior to registration, and that applicant must

then instruct its registrar to proceed even though it has been placed on notice of the preexisting

right. The brand owner would get notice of the registration but will have no notice prior to the

registration’s finalization. This process should provide some argument by the brand owner as to

notice and bad faith, should a dispute develop.


13

RPM Reform

The Sunrise and Claims Notice RPMs are currently the subject of Phase 1 of the RPM PDP at

ICANN. A final report is due in April 2020 and there will be public comment opportunities leading

up to it. The UDRP and URS will be the subject of Phase 2. Phase 2 work should begin shortly

after Phase 1 is completed next year. Improvements to the UDRP that brand owners may wish to

seek will be on the table. The two most important are:

“Or” Instead of “And.” Since the UDRP arrived on the scene, several ccTLD policies have

been implemented by registries which parallel, in significant respects, the language of the UDRP.

What most of these more modern policies have in common, however, is their divergence from the

UDRP when it comes to what kind of bad faith must be proven…Most of the more modern policies

allow for a transfer decision in the event that the domain name was either registered in bad faith

OR used in bad faith. The UDRP requires both registration AND use in bad faith. This requirement

has lead to unfortunate decisions where the registrant was clearly using the domain name in bad

faith but the UDRP was powerless to correct the injustice. The UDRP should be amended to

replace “and” with “or.”

Loser Pays. Should the respondent choose to defend, he should have to deposit the amount of

the arbitrator’s filing fees, which complainant would have already paid, with the provider. Should

the provider find for the complainant, the complainant’s fee would be refunded, and the provider

would keep the respondent’s payment. If, however, the panelist finds for the respondent, the

provider will keep the complainant’s fee and refund the respondent’s payment.


14

ICANN 64 UPDATE

Kobe, Japan

March 9-14, 2019

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GDPR/WHOIS/EPDP(Background)

• Various efforts to reform WHOIS have been ongoing at ICANN for years. But the last year(since May 2018) has seen rapid changes to WHOIS in response to the EU’s General DataProtection Regulation (“GDPR”).

• On May 17, 2018 ICANN adopted the Temporary Specification for gTLD Registration Data(“Temp Spec”) to replace certain requirements from the RA and RAA in response to theGDPR and to provide an interim model while a more permanent model was developed.

• To develop that permanent model, in July 2019 ICANN initiated an Expedited PolicyDevelopment Process (“EPDP”).

• The EPDP team published an Initial Report on the first phase of its work in November2018, and submitted its final report on that first phase (the “Phase One Report”) to ICANNin February 2019.

• On March 4, 2019 the ICANN GNSO Council voted to approve the policy recommendationsin the Phase One Report and submit that report to the ICANN Board.

• The ICANN Board adopted the recommendations (except for portions of two) from thePhase One Report during its meeting on May 15, 2019. The EPDP is now in the secondphase of its work, which will focus on, among other issues, a system for standardizedaccess to non-public WHOIS data.

16

GDPR/WHOIS/EPDP(ICANN 64)

• Meeting fell during a sort-of “half time” between Phase 1 andPhase 2 of the EPDP.

• Post hoc discussions around Phase 1 Report and GNSOCouncil’s vote (week prior).

• Planning discussions around procedure/process for Phase 2:who will lead EPDP for Phase 2, who will participate in EPDPfor Phase 2, timing, deliverables, issues to be addressed, etc.

• Sessions on the “Draft Technical Model for Access to Non-Public Registration Data” from ICANN's Technical StudyGroup on Access to Non-Public Registration Data (“TSG”).

• ICANN 64 GAC Communique.

• Joint GAC-ALAC Statement on EPDP.

17

RPM WG(Background)

• Several new rights protection mechanisms (“RPMs”)were introduced in connection with the rollout of newgTLDs in 2012.

• As discussed, these included the Uniform RapidSuspension System (“URS”); the TrademarkClearinghouse (“TMCH”) and its “Sunrise” and“Claims”; and the Post-Delegation DisputeResolution Procedure (“PDDRP”).

• In 2016 ICANN launched a policy-developmentprocess to review those new RPMs and the long-standing Uniform Domain Name Dispute ResolutionPolicy (“UDRP”).

19

RPM WG(ICANN 64)

Sunrise:▪ Generally agreed that matching rules for Sunrise should remain the same

(although “truncated” versions of marks where the full mark incorporates the TLD

itself may need to be further considered).

▪ Generally agreed that use of invalid SMD files is not a prevalent problem.

Claims:▪ Generally agreed that Claims did not need major overhaul.

▪ Generally agreed that Claims notices should be sent before completion of a

registration (not after).

20

SubPro and Geos(Background)

• New gTLD Subsequent Procedures PDP (“SubPro”) has

been evaluating possible changes to new gTLD policy

for future new gTLD expansions.

• SubPro issued its Initial Report in July 2018 and a

Supplemental Initial Report in October 2018.

• Work Track 5 is a sub-team of the SubPro focused

specifically on the rules and requirements concerning the

use of terms with geographical significance as future

new gTLDs.

• Work Track 5 issued its own Supplemental Report in

December 2018.

21

SubPro and Geos(ICANN 64)

• SubPro discussed several topics it had identified aspotentially warranting closure, based on publiccomments received on its Initial Report andSupplemental Initial Report.

• Work Track 5 spent its time reviewing, analyzing, anddebating public comments received on its Initial Report.

• One issue: what is going to count as a “geographicname” (e.g., translations, three-letter names)?

• Post-ICANN 64 “Epilogue”: a May 15th ICANN BoardResolution directed ICANN to “continue processing ofthe .AMAZON applications according to the policies andprocedures of the New gTLD Program.”

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Looking Ahead

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