Trademark Protection and New gTLDs Wednesday, 28 October 2009 ICANN Meeting Seoul, Korea >>KURT PRITZ: So everybody, we're going to start in two minutes, okay? Everybody, thanks very much for coming. Mr. Foody is here, so we can start. [Laughter] Thanks for coming and attending what I think will prove to be a very informative and interesting session on proposed trademark protections for new gTLDs. You probably remember that the GNSO delivered 19 policy recommendations to guide the implementation of new gTLDs. A very important one was that new top-level domain strings should not infringe the rights of others. And since the publication of the first applicant guidebook, there's been a lot of public discussion and work to develop specific rights protection mechanisms for inclusion into this process. We're here today to discuss aspects of the various proposed models for two purposes. One is to try to hone the model and develop the best model for inclusion into the guidebook using the collective expertise of the people in this room, which I think is formidable. And the second is to inform the GNSO work that is starting to consider two of those rights protection mechanisms specifically. So we're here for those two things. Excellent. So a brief history of the world is that in response to public comment, the board formed the Implementation Recommendation Team to develop a specific rights protection mechanisms proposal for the guidebook. So let's remember that as recently as Mexico City, right, we started with a blank sheet of paper. We had nothing. And now we're arguing details, whether and how. But we've got something very substantial to look at, and it is an indication of how far we've come. Those proposals were discussed in an online public forum where it garnered over 200 comments and also in face-to-face sessions in Sydney, New York and London, which sounds quite posh but there was a lot of work associated with that. Following that, there was quite a bit of analysis of the various positions. And this resulted in an ICANN staff proposal for various rights protection mechanisms to be included in the guidebook. Does everybody hear that sound? Or am I just going -- Okay. In the guidebook -- and they have been posted for public discussion in a couple of ways. Some have been put into the guidebook itself, which is, you know, a great big proposal, and others have been referred specifically to the GNSO for additional discussion and advice to the ICANN board. So that brings us to where we are today, which is this workshop which has these two purposes, remember, to kind of hone the model and inform the GNSO discussion. I'm very pleased and ICANN's very pleased to have Dr. Bruce Tonkin as the moderator of this discussion. He's of Melbourne I.T. and also a member of the ICANN board. And he's joined by a very distinguished panel. Mark Partridge of Pattishall in Chicago, he is also the ABA rep to ICANN and also an UDRP panelist with WIPO. Eun-Joo Min from WIPO. Steve Pinkos on behalf of ENUM. Jeff Neuman, the vice president of law and policy, from NeuStar. Kathy Kleiman, a co-founder of the NCUC and author -- co-author of the UDRP. And also we have members of ICANN staff joining us who are subject matter experts. So that's Dan Halloran and also Amy Stathos of the general counsel's office. So they will lead the discussion, but we'll all get a chance to participate in it. So what rights protection mechanisms are suggested or proposed? What's going to be discussed here today? One way to look at it is through a registry operating life cycle timeline, which is sort of divided up between prelaunch, the moment of launch and then ongoing operations. So one rights protection mechanism we're going -- that will be discussed today is an IP or trademark clearinghouse that provides trademark protections in the prelaunch phase of the registry life cycle. That IP clearinghouse would support registry services such as sunrise or an IP claims service. Then after launch, after names are registered and there's ongoing operations, additional rights protection mechanisms are proposed. One is a sort of rapid take-down called URS, universal rapid suspension system. Another is a post-delegation process, so after the TLD is delegated and after names are delegated, how can registries be held accountable to ensure that the policy recommendation is attained to not infringe the rights of others. And I thought it would be instructive in this chart also to indicate that UDRP is an existing rights protection mechanism that will also be available for new top-level domains. So you see where the rights protection mechanisms are meant to provide protections both prior to launch and then after launch. So I'm going to very briefly review each of these three rights protection mechanisms, and then we will pose questions to the panelists for discussion. So in each case, we are going to say "so what is it" and then "what's changed"? The IRT made proposals, there was a churn in the form of public comment, and then analysis by staff, which is the staff best effort at determining the synthesis of public comment and the proposals. But that's just the first step in iterating towards final models and implementation of these things. So the IP or trademark clearinghouse, it's simply a database of authenticated marks, both registered and unregistered marks. It fulfills two functions. The database operator first validates marks as they come in, validates them before inclusion in the database. And then the secondary operation is to provide that data to registries during the launch phase -- prelaunch phase only to support a sunrise service or an IP claims service. And so what's the purpose of this? That it replaces the need for trademark holders to register their mark in several different clearinghouses in an environment where introducing seven new TLDs every three years, it's not such an onerous task to register multiple times. In a new environment where we're introducing maybe 100 TLDs a year, that becomes a much bigger burden and there's efficiencies that can be gained. And then -- so it replaces the need for trademark holders to register multiple times in clearinghouses and also allows the registries to efficiently develop these IP claims and watch services. And the idea is that ICANN's not going to operate this clearinghouse. It might be licensed by ICANN, but it would be a separate entity that does this work. So what changed as this model's evolved so far is that we changed the name of it, which isn't significant, but the role of the clearinghouse is tailored to trademarks, registered and unregistered trademarks, but trademarks. And where -- we don't envision a license -- for ICANN to have a license to use the data but, rather, there be some sort of limited terms of use. So ICANN might have the same access to data which admittedly is already publicly available data as anyone else. Significantly, the trademark clearinghouse in the proposal supports an IP watch and IP claims service but not a globally protected marks list. So that isn't part of this proposal. And then, finally, this proposal's been perturbed by instead of having one entity perform the validation function and then support the IP claims and sunrise services rather to bifurcate that function for two reasons: Some entities are good at one thing, some entities are good at the other. And, two, is it reduces, perhaps, the incentive to admit more names as a way to kind of make more money. So it is meant to tailor abuse. So I'm not going to read these, but we are going to pose these questions to the panelists later. So when I get towards the end of the presentation, you will get to see this slide again. But I just wanted to try to make a little more coherent the layout of it for when we get to that step of the panel discussion as soon as you're done with my somewhat tiresome talk. The second rights protection mechanism is a uniform rapid suspension system. It's intended to provide rapid relief to trademark holders for most clear-cut cases of infringement, so inexpensive and rapid. So what are the trade-offs in making it more rapid than, say, UDRP is that we have to be more certain of the outcome. It's been described that many, many, many, many of the UDRP cases are not answered and the registrant, in fact, abandons ship as soon as a claim's made. So this is intended to recognize that many of those claims are, in fact, uncontested and they're blatant, clear-cut trademark infringements. And it's intend to facilitate that finding. But, therefore, there is a higher burden of proof. The filing fee will be set by the provider but it is expected to be in the range of about 300 bucks. That's the goal. And it's different than UDRP. It results only in the suspension of the name. So, say, it is a three-year registration, that name would be suspended for three years and then made available again. It is not a means of gaining -- for the complainant to gain the name. That's a major difference between this and UDRP. What's changed? Well, instead of referred to -- you know, this is one of the proposals that it referred to the GNSO discussion and it asked them to consider as a best practice rather than mandatory. So we're going to have the panel talk about the effects of that later. So the guidebook -- the former would be included in the guidebook would be as a best practice but with strong incentives for TLD operators, proposed TLD operators to implement it. There's -- there was a proposal part to have a fee to defend a large number of names because some claims are against a large number of names, but that was removed. There were some comments that 14 days was too short a time period to reply, that people go on vacation. But wishing to keep the "R" part in URS, it is proposed that the answer could ask for a seven-day extension to provide an answer. But absent that request, the 14-day period would hold and, also, provides for fax -- notice by fax. So these were all suggestions made in the public comment. And so we have a list of issues here that we'll discuss with the panelists and we are going to read later. I will skip ahead. And then slightly more complex, and we'll spend a few more minutes on this, is a post-delegation dispute process. After the TLD is delegated, after the evaluation is done, how can registries be held accountable? How can we ensure that they do not systemically violate the rights of others? And so this is intended to address a systemic -- systemic or cybersquatting type of behavior. Think of the -- the issue is really the cybersquatting really occurs at the second level, right? It is really registrants that are exhibiting this bad behavior. So at what level can we take that bad behavior and put it onto the registry holder, registry liable for the behavior of many registrants? And so -- and so the dispute is really between the rights holder and the registry. It's a little similar to UDRP in that regard, is that a complainant will say, you know, "These registrants are bad here but I have evidence that you, registry, you are facilitating this behavior in a certain way and you should be held responsible for it and liable for it." So this will be not an ICANN process but an independent dispute process because ICANN doesn't adjudicate between claimants of rights. And remedies of this could include sanctions, suspension or even termination of the registry. So that's different than -- that's different than contractual compliance complaints. So if a registry is violating its agreement in some way, then a complainant comes to ICANN and says, "That guy is violating his agreement." And then our contractual compliance staff and legal staff will investigate the claim and make some sort of determination as to whether the registry is in breach of the agreement and then take appropriate escalated actions. We have process flows to govern that. So claims of breach should be reported to ICANN and should be addressed by contractual compliance. So I made a couple need graphics. And one is so a contractual compliance claim, to differentiate it, the rights holder or any complainant would go to ICANN and file a report, a compliance report, with ICANN. And then ICANN would undertake investigation and take enforcement action as necessary with the registry. In this infringement-of-rights claim, a rights holder would go directly to the dispute resolution provider and make a claim. And the registry would answer, and then there would be the dispute resolution process provided by the service provider. And the service provider would provide a report to ICANN that would suggest or recommend -- you know, report on the finding and then suggest what sanctions might be given. But it would be up to ICANN to decide on what sanctions there would be. So there's quite a bit of change here between the IRT proposal and this proposal, some larger, some smaller. This dispute resolution process really needs to define both for the rights holder, I think, and the registry as bright a line as possible as to what's expected of behavior. So the standard requires clear and convincing evidence of affirmative conduct by a registry operator, that mere knowledge of infringement is not actionable. A significant change is that ICANN wouldn't be a party to the dispute, so the IRT proposal had ICANN making a determination initially in the dispute for the first 45 days. If ICANN couldn't come to a determination, then it would be referred to the dispute resolution provider. I think at least internally ICANN is not equipped to make those sorts of adjudications. And having these sorts of disputes only go directly to the dispute resolution provider will be quicker. So then both sides would prepay a fee, and then the prevailing party would get a refund so that it's a loser-pays sort of scenario, which is intended to be a detriment for frivolous or abusive claims. A shorter list of questions but sure to engender just as much discussion. So I'm going to turn it over to Bruce. Are you ready? Should I put up the first set of questions? >>BRUCE TONKIN: Thanks, Kurt. I guess just before we commence the comments from the panel, I guess just stating again the framework that Kurt pointed out earlier, firstly, that the purpose of this session and panel is to help inform the GNSO's work that's already commencing as of today to look at these proposals. And it's also intended to stimulate public comment because we are in an open public comment period on these proposals, and we're really seeking people from the community to respond to that. So what we're not going to try to do is solve all the problems here. And what you'll hear, that some panelists have different views. And it's really -- the next steps beyond this is to get other people to submit their support or further thoughts based on what they hear from the panelists and also that the views -- different approaches from the panelists will help inform the GNSO. The other thing is that I do have a timer that I put on the screen just to give both the panelists and then later the members of the audience here, when you're speaking, to try and sort of keep your comments brief and to the point and then submit more detailed comments via the public forum. So don't try and attempt to cover every possible issue that you can think of. Try and focus on the ones that are very significant for you and also try and focus on what change you would like to see the staff make to the proposal rather than just say you think the proposal's good or you think the proposal's bad. Before we start with comments from the panelists, on the topic of the trademark clearinghouse, I would first like to ask the panelists whether they have any questions of clarification they would like to ask Kurt, if there's any aspect of the staff proposal that's not clear to you before you state your comments. Are there any questions from the panelists? Jeff? This is on the trademark one? >>JEFF NEUMAN: Oh, no. >>BRUCE TONKIN: Clearinghouse one. You're good? >>KATHRYN KLEIMAN: I do have a question. Kurt, could you talk a little bit about how you're going to set up the relationship between ICANN in the now two parts of the trademark clearinghouse? >>KURT PRITZ: I think that would be a good topic of discussion here. ICANN certainly wants to at closest hold that at arm's length. It doesn't want to be an operator of the clearinghouse. I think there would be separate relationships with each of the two entities. I don't think one would contract with the other. But I'm pretty -- I'm talking, you know, off the top of my head here, and that hasn't been thought out and I would like recommendations on that. >>KATHRYN KLEIMAN: But the rules for the operation of both would continue to come through the ICANN process? >>KURT PRITZ: Yeah. >>KATHRYN KLEIMAN: And if they change, they would come through the ICANN process? >>KURT PRITZ: Right. >>BRUCE TONKIN: Okay. Kathy, why don't you kick off then. I will start the timer to give an indicator. I will let Kathy make some opening remarks. >>KATHRYN KLEIMAN: These questions are fairly new and they just went around recently so they are incorporated into my comments. First, thanks, Kurt, Bruce, everyone. This is a difficult process. We come from different places, and my constituency majority believes the trademark clearinghouse is unnecessary, at least as run and accredited by ICANN. The marketplace, the private sector has worked fine for all prior rollouts. But that's not our starting point today. Our starting point is the trademark clearinghouse and the report of ICANN staff. And I have to say, Kurt, it's getting better. Here's why. The rationale and scope are much more closely tied to trademarks. What's the trademark clearinghouse for? It is a place for trademark owners to voluntarily submit data, and it is a place that registrars will use when rolling out their new gTLDs with great discretion and great choice. Here's the thing. In the noncommercial constituency, we understand the notion of efficiency. Truly, we do. The idea that the trademark owner will not want to take the same piece of paper, the same federal certification of a trademark -- sorry about that -- to 500 places. That makes sense to me, to 500 different clearinghouses. That makes sense. There is an efficiency argument here. But that's just it, it is one piece of paper. It is a federal registration. It's not a label. It's not a bottle. It's not a letter. It's not a business card. Should ICANN get into the business of validating common law trademarks or unregistered rights? If it does, it's gone too far. Why? Because there are very few common law jurisdiction countries to begin with. And in them, verification is always done by the courts. So, let's say -- let's keep it clean. Let's keep it efficient. Let's keep it verifiable. Use the valid registration issued by a national jurisdiction which conducts substantive examinations of trademark applications prior to the registration. Complicated language, good language, clear language -- and it's not mine, it is staff's. It comes from the URS report. And perhaps at a threshold of national registration, if you want to approach the idea of a globally recognized mark, then set a threshold for the trademark clearinghouse for the number of countries that you need for trademark registration. I've been told to slow it down. But then I won't be able to keep with the clock. Always have the same problem. Further, keep it local. Keep it regional. And that's easy. ICANN has now separated the validation function from the administration of the database function. It was a brilliant change, and one we didn't even request. You can have regional validators, and we recommend that you do. That way, the regional validators will know the trademark laws of the myriad of countries around the world. They'll -- if you have an Asian -- if you have an Asian trademark clearinghouse, they will know the Asian laws. They will be much closer to the country. They will understand the terms, the scope, the uses, the categories of the trademarks. They'll provide much better, much more accurate ways of putting the data into the database in a consistent manner. And because there's one database, they can all feed into it. Further, provide clear required language that protects registrants when they find out about the trademarks that are in the clearinghouse. Our greatest fear is that legitimate registrants, commercial and noncommercial, will be driven away from a domain name to which they are otherwise entitled to register. The fact is that in the real world, the same dictionary word is often registered hundreds of times. And, further, it is used millions of additional ways in non-trademark and noncommercial uses. Think "Time," think "Fortune," think "Apple." So avoid the chilling effect. let's work on information and notice that comes to registrants and minimizes the chilling effect. Let's them know their rights. Further, limit the clearinghouse to making it interim and make it subject to evaluation. As much as we still think it is outside the scope of ICANN, we think that this particular procedure -- this clearinghouse is completely doable. Thank you. [Applause] >>BRUCE TONKIN: Thank you, Kathy, and you did well with the time. [Laughter] >>BRUCE TONKIN: Go ahead. >>STEVE PINKOS: Thanks, Bruce. I think on this issue, the ENUM position will be a little bit like the Phoenix Suns basketball team, it's run and gun. I don't think we have much -- or much problem with the shot clock. Quite frankly, we think the clearinghouse is a very practical and effective way to implement RPMs. It's very logical. It brings logical efficiencies to a rights protection regime within the DNS. Kathy has raised some issues that we'll discuss and I think are -- you know, can be resolved, but, by and large, the structure that Kurt has described today is one that we think the GNSO should endorse, and ICANN should get to work in a short period of time on implementation. Again, importantly I think sometimes people get a wrong idea about what the clearinghouse may be. I think Kurt was clear today. It's a storage facility, it's not a policy determination facility. And it is something that can be reasonably relied upon and used by registries, going forward, multiple new registries, multiple new -- in multiple new TLDs, and we would encourage the GNSO and the participants at this table that are a part of the GNSO process to resolve the remaining questions and get to work on implementation. Thanks. [Applause] >>BRUCE TONKIN: Thank you. >>JEFF NEUMAN: Okay. I wanted to just -- there's five questions or so on the board. I just want to address the chilling effect one. I think others can address some other subjects here. You know, let me just state for the record that there is no chilling effect to the IP claim process. It's a hypothetical argument that has no basis in reality. I could stand up here today and I could tell you that the earth is flat. I can get other people to stand up at the mic and I could tell them to say the earth is flat. I can hire lawyers and go to public interest groups and I can have them come up here and say that the earth is flat. That doesn't mean that the earth is flat. The trademark claim process is not a new process. In fact, it's almost 10 years old. It has been implemented before in dot biz in 2001. And to date, it was the largest prelaunch intellectual property protection service of any gTLD registry that's been launched. Not one complaint was received by the registry or anybody else, for that matter, that the service had a chilling effect. In fact, one could easily argue that there's more of a chilling effect in a sunrise process, as opposed to an IP claim process. At least in a sunrise -- at least in an IP -- let me go back a step. In a sunrise process, the trademark owner's automatically given the domain name registration simply by showing it's got a registration. There's no attempt for anybody other than a trademark owner to actually get that name. In an IP claim process, the reverse is true: Anyone could apply for the name. At that point in time, once the application is submitted -- and again, this is all prelaunch -- at that point in time the applicant is notified that there is a trademark claim on that name or that identically matches that name, and in that notice -- at least the way it worked in dot biz -- in that notice, it said that the claim was based on a certain federally -- or nationally registered trademark, had information about the trademark itself -- for example, the class of goods and services -- and provided all the necessary information for the domain name applicant to actually make an informed decision on whether it wants to proceed or not. This is what the IP claim process actually is. It lets the registrant or the prospective registrant make a decision as to whether the mark is going to infringe on the rights that it's notified about. There's no chilling effect in that. It is what happens in everyday life. Someone gets notice of marks that are out there, and then it could decide for itself whether or not to proceed. Contrary to what I've heard being said -- yeah, 20 seconds -- contrary to what I've heard been said, that there's an opportunity -- there is no opportunity for a trademark owner to contact a prospective registrant. The trademark owner is not notified about an application. It's only notified once that registrant decides to proceed and it becomes a registration. All I ask is that we talk facts and reality. This has been done before, and it can and should be done again. [Applause] >>BRUCE TONKIN: Thank you, Jeff. >>EUN-JOO MIN: We don't have comments on the clearinghouse but I hope to use the three minutes for the other two issues. [Laughter] >>BRUCE TONKIN: Mark, go ahead. >>MARK PARTRIDGE: Thank you. It's nice to hear that overall there's probably more agreement on this issue than disagreement, in the sense that there -- it's good to have a centralized database. It seems we have agreement with that. That it helps reduce cost. It would be beneficial in a lot of ways. On the chilling effect, in particular, I think we should also look at it from the other side of the benefit it provides. In the practice I have in dealing with domain name disputes, I see registrants who end up becoming involved in lawsuits or UDRP procedures who say that they would have preferred not to be there and if they had known that there would be a claim made against them up front, then they would find another way to proceed. They could avoid the dispute. So there's a -- there's a benefit that I think offsets the chilling effect in helping good-faith registrants avoid disputes early. So I think we should keep that in mind as well. The clearinghouse, I think another point of clarification. It is not certifying any rights. It's really simply authenticating data, and so that it provides a central database of data that registrars and registries and potential registrants can rely on, and that's a good thing. One of the points that's left out of the clearinghouse proposal that I think we should give further consideration to is, I know it's a very controversial topic, and it's why it's not there, but it's the globally protected marks list. The omission of that component to the rights protection mechanisms is a very major concern to a lot of the people who are commenting throughout this process. In fact, of all the different proposals that were made, having some kind of globally protected marks list was the most widely proposed of them. It is also the only recommendation that's directed at reducing the need for defensive registrations, which is one of the stated goals of ICANN in its public comments. In thinking about it, don't think of it as a famous marks list. I mean, that's an issue that's -- that's been explored before. It has not been adopted. It's not what this is about. What we recognize going on in the world is that there are some major brands who have registrations throughout the world, they're frequent victims of cybersquatting over and over -- >>BRUCE TONKIN: 10 seconds. >>MARK PARTRIDGE: -- they are going to bring actions, they are going to bring claims. This would be a way to reduce those disputes, reduce the number of disputes, and that would be a good thing to the registrants as well, to know that they're not going to be picking a name that will cause them to become involved in these disputes. The -- it's not designed to create any new rights; it's simply designed to recognize the facts that there are marks that are registered around the world and globally protected, that those parties are victims of cybersquatting, and that they will bring claims, so let's deal with it early and try to prevent those claims from ever needing to be brought. [Applause] >>BRUCE TONKIN: Thank you, my fellow panelists. Just a couple of points of clarification that occur to me in the discussions that we've just heard and also in previous days. You can tell I've had too many late nights. And one is as others have mentioned, the clearinghouse is just a database and the actual processes and rules for what rights used in sunrise or prelaunch processes is done by the registry, so a registry for a particular TLD may say, "This registry has a criteria for who can apply" and they might say, "The only people that can apply are people that live in Africa" and they might say that, "The rights that we recognize in our sunrise process is those that have trademarks in Africa," as an example. So I just want to make clear there's a -- the database doesn't mean that because it's in the database, that there's an entry in the database, that that entry in the database would be used by any particular registry in their processes. So they're different decisions. The other thing that's come up, too, is a concept that somehow for a particular string or name that's in the database, that there is only one entry. So let's say the name was a name like book. There could be hundreds of entries for the name "book" in the database, and each of those entries would have specific rights associated with it. It could be a word that's used for a particular country and for a particular classification. The registry itself would then be using that information and they would have their own allocation method as to if they have multiple parties wanting the same name, they have their own allocation method for which party gets that name. And most registries, in their prelaunch processes, have a dispute process as well. So if somebody relies on data in the registry to say that they have a right on a particular word -- let's say it's "book" -- but the -- and that party gets that name, and another applicant challenges their right to have that name, then that would be going through a dispute process. The clearinghouse makes no decision as to which right's got any relative value over any other right. It's just purely a database, so I just wanted to clarify the separation between the database and the policies and processes that would be used by a registry. So at that point, I think we'll go across onto the next topic, and I don't know whether Kurt's still driving the display up there. But I'd like to get into the URS discussion and he can just put up some of the questions that have been on the URS topic. And then just in fairness of speaking order, I'll start with Mark and go back in the opposite direction. >>MARK PARTRIDGE: Thank you, Bruce. Well, the URS, I think, is one of the critical components of the rights protection mechanism. Probably the most important to make the whole system work. It addresses what's become fairly unanticipated but real problem that exists now, in that there are cybersquatters who register dozens -- hundreds of names. They default in their cases. There's no defense brought in the case because none's available. And this is creating a great deal of cost and added burden on the system which should be dealing with legitimate disputes, rather than clear cases of abuse and causing domain name transfers to brand owners who don't really want to have those registrations but they have the cost of maintaining unwanted transferred domain names. The big difference, I think, in the proposal that's come forward and what the IRT recommended and I think what the trademark community brand owner community is seeking would be that this should be a mandatory policy. The importance of a mandatory policy is that if you -- if it's not mandatory, the bad actors will flow to a registry that's not adopting the policy. The good registries, the ones who follow the best practices proposed by ICANN, will be at a disadvantage. That's not good for the system. So if it's mandatory all around, then everybody would be on an even playing field. I guess it should be pointed out that the URS proposal, either the IRT proposal or the staff proposal, doesn't go far enough in the eyes of many of the people who commented. What's different is many of the commenters thought that in the event of a default, there should be an automatic transfer. That's not what the IRT proposal was and what's here. There's a substantive review, and the result of the adverse decision is that the site is taken down, not that there's a transfer. If party wants to seek transfer, the UDRP is available. So this is a reasonable compromise to a position, but as I said, it doesn't go as far as some of the brand owners wanted. Two things that we think should be adopted here to help reduce the cost all around. The IRT proposal recommended the use of a form complaint and answer and decision. This should be as much of a simplified, automated process as possible, and also, there should be some kind of preregistration of rights. Many of the people who bring UDRP actions bring multiple actions, and if their rights could be preregistered so that that proof was already available, that would be a good thing. Ultimately, this is a benefit to the good-faith registrants because they will find it easier to respond to these than is currently the case under the UDRP, where you can get a complaint that's inches thick, and it can be very daunting. This would be a -- as envisioned in the IRT report, a very simplified process that a good-faith registrant could easily show that they're making good-faith use of this, and because of the higher burden of proof and the higher standard, that would result in a decision in favor of the good-faith registrant cheaply, quickly, and at a lower cost, all -- to all parties concerned. Thanks. >>EUN-JOO MIN: While we believe that the process can be refined to further achieve the common aspirations for a more time- and cost- efficient, equitable procedure, our primary concern with the current URS proposal is the limited effectiveness of the proposed remedy, which is to take down or to suspend the domain name for the balance of the registration period. Kurt, in explaining the current proposal, mentioned that for example, the domain name would be suspended for three years. We think that it will probably be more -- it will probably be more likely that it's going to be suspended for three months and not three years, and that is because from the experience of our UDRP cases, domain names that are used for abusive purposes are not registered for three years, not for 10 years. They're mostly for one year. So for the domain name to be used in an URS proceeding to be brought up and a decision rendered, the balance of the registration period will be most definitely less than 12 months, and probably around 3 to 6 months, maybe. So that will shift merely the burden on the trademark owners from an undesirable cycle of renewing defensive registrations and we will recall that one of the primary concerns expressed by the trademark community was the extraordinary burden in defensive registrations, but shift that burden to even a more costly cycle of filing URS complaints. It's simply going to be a revolving door. Domain names will be taken down. After a few months, they'll be put back to the pool, snapped up by often automated programs. URS complaints will have to be filed again. We understand that domain names are -- that are used by infringing purposes can very legitimately use -- are used for good-faith purposes, and we're not suggesting that the domain names be automatically transferred. We're not suggesting that they be put on a reserved list for an indefinite period of time, but consideration should be given to adopt measures for a balanced approach. We were quite pleased to see, in the staff summary of the public comments, that -- and I'm now quoting -- the deterrent effect of filing an URS proceeding remains intact absent a transfer because the next person trying to register it will know it was a subject of an URS proceeding. This concept, which I understand is a staff proposal, did not get explicitly incorporated into the staff proposal, and we hope to see that more explicitly reflected. Thank you. >>JEFF NEUMAN: Thanks. I'm going to try to present from a registry perspective. I think, you know, I've heard ICANN staff say that, you know, the reason -- even though it's optional, there is a strong incentive for a registry to adopt the URS in its proposal, and I think they're right. I think there is a strong incentive. And I think most registries will actually do that. However, I do believe that the URS should be mandatory. And the reason is probably a little bit different than anybody else will express on this panel. First, I want to say that I'm a little disappointed in actually being put in this position. In fact, it's unfair of the staff and the board to put a registry in this position of having to make a choice about selecting an intellectual property protection mechanism or deciding whether to put it in place or not. It's fundamentally unfair to put us in this position. We want to provide a service to registrants. We want to provide whatever it is - - domain names, in conjunction with additional services. Why are we being put in the middle of deciding whether to put in an intellectual property mechanism? It is fundamentally unfair. And I'm disappointed in the staff and the board for putting registries in that position. Make a decision. I hope it's made mandatory because I believe on the balance, it's in -- it's in the interests of the Internet community. But please do not make it optional. It is really unfair to do that. [Applause] >>STEVE PINKOS: We at ENUM, we've supported some form of a rapid takedown for quite some time, and in fact, we were heartened to see the IRT take a close look at this, because we had proposed something early -- early in this year along these same regards, and the statistics have already been talked about. The number of UDRP cases that result in essentially a default judgment. So it just makes sense that there would be a fair and efficient mechanism to take it -- to take down the instances of clear infringement. Because quite frankly, no one should bid -- build a business model around, you know, profiting from trademark or other intellectual property -- abuse of trademark or other intellectual property rights, but at the same time, the -- you know, there must be concern taken into consideration that the process is not abused. There has to be -- we've talked -- or we haven't really talked much about the fee and, yes, the provider ultimately is going to have to set the fee, but the fee's going to have to be at a reasonable level to help act as somewhat of a deterrence from abusive filings. There should be -- there should be recourse or there should be punishment for people that do abuse the URS. But much like with the clearinghouse, we think there's been -- there has been a lot of discussion of this issue. Yes, there are a few outstanding remaining issues. I'm sure Kathy will raise some of them in just a moment. [Laughter] >>STEVE PINKOS: And, you know, so -- but the reality is, the board has said there should be new TLDs. The GNSO has said there should be new TLDs. Now it appears to us that the board has said there's going to be some form of an URS. If you can interpret the letter as saying that. So what I would suggest is for the open issues, that the GNSO bring the affected parties together, you know, put them in a conference room, give them 48 hours type of thing, and work out these remaining issues. I mean, the GNSO should report back to the staff and the board, in our view, with a recommendation for an effective URS. Yes, that is mandatory for it to have its full -- its full effect with proper safeguards including reasonable fees, including reasonableness as to how the claims can be tiered. And then, you know, the board -- or the GNSO can make the recommendation to the board. But, you know, in our view, we're almost there. Let's cross the finish line. [Applause] >>KATHY KLEIMAN: I may go a little over my three minutes but I'm going to try to talk slowly. Okay. The URS. This one, Bruce, is a little more difficult, for my constituency. This is a rapid takedown process and frankly we know that most registrants won't know about the proceeding until it's finished. That's when your grandmother, your school, your community, your child's Web site, loses its resolution. What can justify this type of expedited process? What can justify ICANN setting up a court of injunctions, a court for emergency rapid takedown? We're told by staff, in the report, that this is for egregious cases, clear-cut infringement, blatant cases. Obviously, that's something exceptional, presumably something with exceptional harm. Okay. Believe it or not we believe there are egregious cases out there. And that egregious conducts happens. But we also believe that the system must be designed specifically to handle it. So you have to -- the system must -- here's kind of a list of criteria that my constituency would expect to see in the URS. You have to differentiate the complainants. Separate the wheat from the chaff. Make sure the complaint regards egregious conduct. Require the best notice possible. Maintain the assumption of innocence and good faith. Have a real evaluation and then have the high burden of proof. That's fair for both sides. It may be a little harsh but this is how we see the staff proposal: It sets no evidentiary standard for egregious conduct. Its standards are lower, not higher, than the UDRP. Its protections for the registrants are lower, not higher, than the UDRP. Its notice is worse, not better, than the UDRP. There's no substantive appeal. There's no real recovery mechanism. What's going to be the result? Frankly, we think the effect on the new gTLD marketplace will be enormous. The word will get out that new gTLDs are loaded down with an unfair process. We should tell you we're calling it "accuse you lose." And then a few real abuses will come along and you'll have poisoned the marketplace for new gTLDs. Noncommercial registrants, individual registrants, small businesses may well find that the old gTLDs are more stable and more predictable and that's a pity, because we want new gTLDs, we want the new space, we want the new opportunities. So here's a quick checklist: Make it egregious, make it fair, make it interim, and you just might make it work. And as a final note -- and I wanted to share this with everyone as we go through the new mechanisms -- we in the NCUC want to work with you. We want to establish common ground, and we wish the best of luck for all of us in this expedited process. [Applause] >>BRUCE TONKIN: Thank you, Kathy. You're pretty much bang on the three minutes, so well done. I just wanted to take a couple of comments or questions of clarification that I think the staff may be able to help with. My first question, which could be to either staff or any of the panelists that are familiar with the process, but I think the distinguishing factor between the UDRP and an URS, in terms of its outcome is that an UDRP can result in the domain name being transferred to the complaining party, whereas an URS, the name is just suspended. And normally, for me, when something is suspended, usually there's some way for it to be reinstated. And I think may address some of the issues that Kathy has raised is if somebody is not contactable for some reason and the name is suspended, that when they find out about it and get back in contact, that there's some mechanism for them to maybe rectify the issue. You know, maybe the -- the Web site has malicious code on it. Maybe the Web site's got a huge logo on it that they're not supposed to be using, and that the situation could be rectified. So I wonder if either the staff could comment on what would be the reinstatement process after it's been suspended. >>DAN HALLORAN: Bruce, thanks. This is Dan Halloran from ICANN staff. I think in the staff proposal -- and I don't remember off the top of my head what the IRT proposal said. The staff proposal said if the registrant is unhappy with the results of the review, there would be like an ombudsman set up to make sure the hearing was decided properly, it wasn't arbitrary and capricious and also the registrant could take it into a court of competent jurisdiction to rehear the case if they don't like the result. >>BRUCE TONKIN: So Dan, I just want to separate -- I mean, just something I'm not trying to solve the solution here, but I think there's difference between appealing a decision because you think they made a wrong decision versus an option for the registrant to change their behavior, so they're not disputing the decision. They agree they were wrong. But they've rectified their behavior. So just -- I don't know whether, Mark, that was considered in the IRT team or not. But if not, it might be something to think about. >>MARK PARTRIDGE: Well, we did consider this issue and it was addressed in a number of different forms in the IRT report. There was a provision that was considered, and proposed, that if the site went down because of default and the party appeared appealed, the site could go back up. We also gave consideration to the idea that if there was an appeal, the site could go up during the term of the appeal. So those are possibilities that were included in the -- in that report. >>BRUCE TONKIN: I'll come back. So thanks, yes. So I think that's something that just in terms of clarity for the registrant and also for the community, that we perhaps articulate what the different options would be in really different cases. There's an appeal case, which is you dispute the decision, and there's the case where the registrant wants to make good, essentially, and there's some process for them to reinstate, whatever that may be. Secondly, just to pick up on a comment Kathy made, and I wonder if the staff could respond: My understanding was that the standard for URS would be higher with respect to perhaps showing infringement than it is for UDRP. Can the staff perhaps respond as to how the staff proposal provides criteria or how we're deciding whether something's clear cut or not clear cut. >>DAN HALLORAN: So I'm sure there's a good reason why Kathy said that, and we'll have to talk and straighten it out why, but we tried to raise the bar. We set it -- I think in the UDRP it's a preponderance of the evidence standard. We said in the URS it should be clear and convincing evidence, which is a higher standard, generally, of proof, to -- that the complainant would have to show to get the thing taken down. >>BRUCE TONKIN: And I think Kathy had a comment to make on the appeal process as well, if you wanted to make that comment. >>KATHY KLEIMAN: Yes, please. >>BRUCE TONKIN: Okay. Go ahead. >>KATHY KLEIMAN: Okay. The appeal, as -- and I've got the staff report in front of me. The appeal here is for cases of arbitrary and capricious or abuse of discretion. It's not a de novo review. And what we're saying is the registrant won't know -- in many cases it's so fast that until the domain name stops resolving, the registrant won't know and won't know that there's a proceeding going on and then they'll say, "Wait a second, I want to tell you my Web site was hijacked or something was going wrong or I have a defense or I" -- just because there's a defense, there's kind of -- almost an assumption of bad faith. We see throughout the UDRP. So I'd like to see this de novo, and I have to say it, and I guess I'm on the record, the IRT kind of got this one right and let's go back to that. [Applause] >>MARK PARTRIDGE: Thank you, Kathy. Bruce, could I comment on the - - not on Kathy's point but on the -- >>BRUCE TONKIN: Yeah, I don't want to get into too much of a discussion because again what we're trying to stimulate is the community responding. But, yeah, if you'd like to respond, yes. >>MARK PARTRIDGE: I just want to comment on the burden of proof. The IRT's perspective on the burden of proof was that it was a higher standard. The UDRP is a preponderance of evidence. The higher standard proposed for the URS was clear and convincing evidence, plus the procedural idea that it had to be no contestable issue. It's -- in the -- under U.S. law, it's like a summary judgment decision. There's no contestable issues, there's no need for further trial, and that then -- then the decision can be made right now. That idea, I think, could be added back into the staff proposal. >>KURT PRITZ: Yeah. So I just want to respond to Kathy. I think -- and you. I think the idea of, you know, a way for -- a method for reinstatement should be inserted into the program, so we can't talk to it right now because we haven't thought it through. That's one. And then somewhere about two-thirds of the way through Kathy's talk, she essentially gave a list of improvements that could be made to the process, so I think we want to put bullet points in front of each one of those and take a look at those. >>KATHY KLEIMAN: I promised Bruce I'd limit it -- well, okay. Then -- evaluation criteria is different than evaluation standards. When we're going into a criminal court, we have different elements of the crime. You know, where was -- was the person trespassing and did they have a gun and then you look at you have to prove it beyond a reasonable doubt, but if you're looking at the same elements, it is UDRP criteria and all you're doing is applying a different standard, you're not going to get to those egregious cases. Evaluation criteria is different than evaluation standards and I promised Bruce we'd take this off line. >>EUN-JOO MIN: I'd like to react on just two points. We've had over 16,000 UDRP -- UDRP cases, and the respondents that we see in those cases are not normally grandmothers, grandsons, friends, engaged in legitimate purposes, but they are -- the trend in cybersquatting has changed. They're -- we're rarely seeing -- we are seeing individuals but more and more, we're seeing respondents that have snapped up expiring domain names through automated computer programs. Grandmothers normally don't know how to operate automated computer programs, and my children certainly don't know how to do that. And what are the types of disputed domain names that we're seeing? For example, we're seeing -- we're talking about swine flu these days. There's a lot of concern. Is tamiflushop.org, buytamifluonline, buytamifluonlinewithoutprescriptions, tamiflucheapest, et cetera, et cetera -- these are not domain names that are -- sorry. I'll go slowly. These are not normally domain names registered by our grandmothers or grandsons. That's one point. The second point is we've talked about how -- how the URS does not protect respondents. I think generally speaking, UDRP is regarded as an ICANN success. So let's take the standards applied under the UDRP. Under the UDRP, the respondent has 20 days to respond. Under the URS, the respondent has 14 days to respond with the possibility of requesting a 7-day extension. So what is the difference? I have a hard time understanding the big difference. Under the URS it seems they get one extra day. Also about notices, that respondent's domain name will be hijacked so quickly they don't even realize what's going on. Under the UDRP, notice is granted by post, fax, and e-mail. Under the staff URS proposal, the same notice methods apply. So, there again, we have some difficulty understanding the concerns for the URS. Thank you. >>BRUCE TONKIN: So I'll end it there because we started getting into the crux of the debate. But I think, in terms of the next steps in the process, it does need to be more work in clarifying standards and what -- you know, how URS is different to UDRP and what the standards are. And there does need to be some thought given to what the appeal and reinstatement processes are, I think, is an outcome of those. And just what those standards are and, et cetera, we're not going to try to solve here now. So I'd like to get on to the next topic, which is the post-delegation process. And the reason for that is that we'll have had the panel address all three topics, but then we'll allow the audience to raise questions about any of those. So last time I started at the end, so this time I'll start in the middle and allow Jeff Neuman to make remarks on this topic. >>JEFF NEUMAN: Can I, before my three minutes starts, ask a question? >>BRUCE TONKIN: Questions of clarification are fine. Don't make a policy statement, though. >>JEFF NEUMAN: No, I won't. During Kurt's presentation, you added this affirmative conduct standard for the registry that's engaged in affirmative conduct. I see that in the language at the top level. I don't see that at the second level. Was it your intent to make it part of the second level, too? >>KURT PRITZ: Yeah, there's similar language, though, that requires some sort of act, right? Do you have it in front of you? I can't read that tiny font. >>JEFF NEUMAN: I know. Sorry. It says there's a substantial ongoing pattern or practice of specific database intent. >>KURT PRITZ: So the affirmative act is intended to be the practice. So the wording is slightly different. And, if you have a suggestion for making it more clear, then -- >>JEFF NEUMAN: Now I can start my three minutes. Thanks. For the record, I just want to point out that the post-delegation dispute resolution process that was initially put out by the IRT and supported by the community is actually not the same one that was put out by ICANN staff in the last version of the guidebook. So I just wanted to make that point for those that may have read the IRT report but not the staff report. They are actually quite different. So while the IRT was cognizant of the fact that a process may be needed to combat a bad actor registry, it was also leery to subject registry operators to the chilling effect of frivolous claims being filed by overly aggressive trademark owners that were trying to pursue an avenue of prosecution not available to them under the law of any national jurisdiction. This not only includes a high threshold for the substantive determination of whether a registry is a bad actor but also significant barriers to the filing of disputes to weed out frivolous actions by those seeking to use the process as a means to extract settlements or other actions that are neither in the best interests of the private parties to a registry agreement or to registrants. And, even if the substantive grounds for the dispute that ICANN has proposed are similar to what the IRT has -- had proposed, the procedural -- the process that's put in by ICANN staff is completely insufficient. ICANN staff needs to go back to some of the IRT recommendations. One of them is to, actually, make it clear in writing in an actual formal process that ICANN's primary role is for contract compliance. It's not anybody else's role but ICANN. ICANN needs to have a written procedure that documents much of what Kurt said in the initial opening statements that, really, someone could submit a complaint to ICANN. Doing that -- and, actually, it's my recommendation that that be mandatory before any post-delegation dispute is filed. The reason being is that it will be -- not only important for ICANN to do its job in compliance, but will also serve a gatekeeper function to make sure that those frivolous claims aren't filed against the registry. In addition, it's ICANN's sole responsibility -- and not anybody else's, not a panel -- to determine what an ultimate remedy is against a bad actor registry. This not only preserves the private party contract between the registry and ICANN, but also preserves a right of appeal for a registry if it were to want to go after -- or sorry -- if it wants to appeal that decision. If it was a completely independent party making that determination and not ICANN's determination, then all of the governing law and dispute resolution in the registry agreement is pretty much irrelevant. There are a bunch of procedural concerns that I put in that I documented in an article including things that -- 10 seconds -- ICANN, essentially, has lowered some of the procedural responsibilities in the name of efficiency. But it's got to go back and look at that. Because, in trying to increase efficiency, it's lowered the cost and lowered the barriers to frivolous actions being filed. And mark my words: I get a letter every week or every other week from a trademark owner against my registry for potential contributory trademark infringement. And, even though the law is on my side, I know that these guys would be the same people that take advantage of the post-delegation dispute. >>STEVE PINKOS: Jeff, I know you're very passionate about this. I'll yield you one of my minutes, if you need to keep going. [Laughter] >>BRUCE TONKIN: I'm sure Jeff will have other opportunity this week to reiterate his comments. If we can move to the right. If you have a comment on this. >>EUN-JOO MIN: So I agree with Jeff that this is fundamentally a question of contractual compliance. The GNSO made it very clear that TLDs should not infringe the legal rights of others. And I hope that that will be made explicit in the registry agreement and also in the registrar agreements. And this procedure would be a standardized form to assist ICANN's contractual compliance team to enforce that aspect of the contract. I was very pleased to attend the IPC meeting yesterday where ICANN's contractual compliance team presented its efforts in reviewing the behavior of registrars that are engaged in cybersquatting. We hope that the same activities will be undertaken for registries as well and that -- and that this procedure can be used to complement, complement such ICANN activities. And I would use also this opportunity to reiterate our suggestion that a similar analogous procedure be adopted for registrars. And I also agree with Jeff that, in the end, fundamentally, because it is a contractual compliance question, the remedies should also be up for ICANN to -- to make the final determination and also to enforce. So that's the first issue. The second -- the second is on standards. ICANN has adapted the standards proposed by WIPO and those proposed by the IRT. And I think further clarity on these standards would be very useful. Jeff asked a question on what affirmative action means. And we also have a similar question on that. For example, in the case of -- in the UDRP cases, but also some of the troubles that we're having with certain registrars, when a contracting party is deliberately engaged in material omission, then is that an affirmative action, for example? And then my last point would be on process. We also do not want frivolous overzealous trademark owners filing complains under this procedure. And the process, as currently designed by staff, we think is a little too late. For example, there's a limit of 5,000 words, which is the same word limit that applies to UDRP. And the response period is also 20 days, which is, again, the same as UDRP. This procedure should fundamentally be very different from the UDRPs. We're talking about registries conducting businesses. And the nuclear bomb remedy would be termination of that agreement. And the process should probably be designed to reflect the import of such a procedure. Thank you. >>BRUCE TONKIN: Thank you. Did you have a comment on this one, Mark? >>MARK PARTRIDGE: Just very briefly. Aside from echoing much of what's been said so far, I think the point that came to our attention in the IRT process was that it seemed to be beneficial to have ICANN involved as one of the steps to help avoid the potential for abuse of the system. And that's missing from this report. And we think it would be a good addition to keep that there as a -- to decrease the likelihood of action by overly aggressive trademark owners. >>BRUCE TONKIN: Thank you. Did you want to comment on this one? >>KATHRYN KLEIMAN: Just a quick, very quick comment on this. Because we were asked to prepare responses to two of the three issues. But I'd like to say we'd like to see the same protections for registries in the new gTLDs that we'd like to see for registrants in the new gTLDs. [Applause] >>BRUCE TONKIN: Just, I guess, a comment about the changing environment that might be possible with new registries in the future and how it might relate to this post-delegation dispute. Currently, we have an assumption that most of the existing, whether they're ccTLD or gTLD registries, generally don't operate a portfolio of names themselves. So, generally, the names registered by third parties are independent from the registry. What could change in the future and where this becomes more relevant, perhaps, or more important is where registry is owned by -- has the same organization that owns the registry as owns the majority of names. So we might see that with more corporate-oriented registries, could even just be different business models. And a registry decides to, basically, not offer names for third party registration. In that case, they would, you know, certainly be more directly responsible for the use of the names than the registries are today. And then the other aspect of that to think about is that a registry can also use independent -- not independent -- can actually use related entities to register names. So a registry might own a independent subsidiary. And that subsidiary might be registering names in that registry. So I think ICANN just needs to be careful that there's not an attempt to disassociate and say, "Well, that's not us. That's this other company," when the other company is actually owned by the same corporate entity. So there will be more complex structures or ownership structures. And I think these post- delegation processes are going to be increasingly important. Any other comments on the panel? >>STEVE PINKOS: Real quickly on this issue of post-delegation dispute, mostly reiterate what Mark and Jeff have said. In response to the questions on the screen, I would say yes to number one and that will help with number two. And, importantly, I think that, in keeping with my theme of kind of getting people together to hash out the differences, this one, the changes from the IRT seem to -- well, clearly, obviously, were made by ICANN staff in an attempt to make this an effective procedure. I'm not sure if they were driven by any other constituency. This may be one to be hashed out directly between ICANN staff and IRT and other people that are interested. It seems like there's a desire to go back something a little bit closer to what the IRT suggested. In particular, you know, the top -- at the second level. I mean, the top level, by and large, probably things would be pretty taken care of. And registries are going to be very disincented, as a business that's invested a lot of money, to try to pull the wool over people's eyes and be dot apple and not sell apples and suddenly sell electronic devices. But, at the second level, registries are rightfully concerned about the slippery slope. These battles have been fought for years in the copyright arena. The slippery slope of vicarious liability and the concerns that Jeff has expressed, I think, are truly legitimate. >>BRUCE TONKIN: Okay. Well, I think at this point we'll go to the audience to raise comments or questions on any of the three topics. We've covered the idea of a database for trademark information. We've covered the idea of a rapid suspension approach. And I think Kurt also has a question. >>KURT PRITZ: I'll start. Everybody wait. >>BRUCE TONKIN: Also can you identify how much time we have for this discussion? >>KURT PRITZ: So, Jeff, I think you and I agree, as usual, on a lot of the points you made. But -- so what I want to clarify and what I heard is that, you know, we're for this post-delegation dispute model, especially an independent dispute resolution process to adjudicate some of these third-party claims. But in the staff proposal there needs to be more or greater deterrence to prevent frivolous or abusive claims, that there needs to be some sort of SLA for compliance in order to be able to predict for rights holders how long the claims will take to -- for compliance to address. And it's ICANN's role decide on the role for sanction. It's not for an independent third party. I know you said more than that, but you said those three things. In general, just to answer it briefly, I supported the post- delegation that was in the IRT. And I do think we could make a workable version of that, and we can improve on it to make sure that it deters the abusive filings that we talk about and make sure that abusive registries, ones that don't own portfolios of names and aren't the ones that Bruce was talking about, to make sure they weren't caught in the crossfire. >>BRUCE TONKIN: Start on this side. Mike. >>MIKE RODENBAUGH: Thank you, Bruce. They do run a little shot clock here. So try keep your comments brief. >>MIKE RODENBAUGH: I want those 20 seconds back. I'm Mike Rodenbaugh. I represent the business constituency. Couple comments, maybe a question in here somewhere. But, if the URS is not mandatory, the theme of my comments is that you're doing nothing here and this entire effort is a failure. At this point you're saying that you can have either a sunrise period, which definitely ought to be a standardized sunrise period across all new TLD registries, which, I think, is not in the proposal now and is very important, or you can have an IP claim service, which, I believe, only goes up to the point that you decide to launch a land rush. After that, typically, typically, registries won't be doing lookups against the database. So, therefore, it's pretty worthless. Because you can then just go and infringe at any time after the land rush begins. I don't understand what the point of the I.P. claim service is in that instance at all. But I do suppose that registries or registrars could do lookups optionally, if they wanted to, for any registration that comes after the land rush. And I think they would be incented to do so particularly because of vicarious liability theories, if their competitor is doing it and they're not. It at least has to be optional. But I would argue the BC position that we're taking is that it ought to be mandatory. Even after land rush, every domain application should be looked up against the database. And, if there's a hit, it should trigger a notice. If not, again, it just makes the URS even more critical; because there will be nothing else in place other than the UDRP, which we all know today -- well, it was a success at the time, certainly, has over time resulted in really becoming a -- not an effective remedy for trademark owners, given the volume and the cost. So I would urge that the URS definitely be mandatory and that also trademark owners who are successful in their URS complaints are able to get transfer of the name. I certainly understand and respect the due process concerns. But, if they're not able to get transfer of the name, it's just going to go back to the pool. And you can have the same issues rise over and over again. Moreover, you're also allowing, in the case of competitors -- that registered names that relate to their competitors, you are allowing them to, essentially, win. Because they're keeping the names from the competitors, unless you file UDRP, which is really what we're trying to avoid. So, as a compromise, what we're proposing from the BC, is that from the date of the URS decision you start the clock. You give 90 more days. And, if there's no appeal filed or court action filed, then the trademark owner ought to be able to elect to transfer the name. >>BRUCE TONKIN: Thanks for the suggestion. Evan. >>EVAN LEIBOVITCH: Hi. My name is Evan Leibovitch. I'm chair of At-Large for North America. And this is a question. And, by the way, Eun-Joo, don't underestimate what children are capable of doing. My son was on e-mail at 3 1/2. In discussions at At-Large and various other parties we've been talking to have been coalescing on the issues of trademarks. We've been generally supportive of what's been going on, but there's a couple of things that are really sticking. And the biggest one that none of our community can support is the idea of the common law trademarks included in there. I'd really like to get your comments on that. This is something that's recognized in the U.S. and in the commonwealth and pretty well nowhere else. So, as you put this in, you're imposing that on other countries that don't recognize common law trademarks. And, you know, most of this is -- should be protectable by people who have taken the time to actually go and register trademark with the national government, go through the process of designating a scope of the category of trade and things like that the common law marks don't have to go through. So I'd like to find out who on this board, who on this panel is actually defending common law marks. Because we'd really, really like to see them out. >>BRUCE TONKIN: Just remember the panel is not making decisions here. It's -- but is your question: Has any panel member looked at that issue? You want to just quickly respond to that? >>MARK PARTRIDGE: I can try to give a perspective on the issue. The idea behind the clearinghouse is it's simply a database of information. Some registries, when they've initiated their process, have said we're going to have a criteria that's based on certain local rights, for example, trade names in the United Kingdom. What would be envisioned here is that that information could be in this clearinghouse so that the registry that is going to use that information would have authenticated information to rely on. It's not -- at least from the perspective of the IRT, it's not intended to create any new rights or to extend a common law U.S. right into a country that doesn't recognize common law rights. The extent to which that common law right is recognized would depend on the decision by the registry to say that this information is of interest to our particular registry. We're a local German registry. We would like to protect German trade names. We're a local German registry. We'd like to protect German book titles. That data could be in the database. But, again, it's not envisioned, from the IRT point of view, to create any new rights or to extend rights beyond their territory. Believe me, the people on the IRT well recognize that trademark rights are territorial. We understand that. We also recognize that much of the world doesn't recognize common law rights. They're based on recognition. Some places they are. And the suggestion would be that the clearinghouse could provide that information to people where it's relevant. >>BRUCE TONKIN: Okay. We'll take any more detailed conversation offline. Across to John. >>JOHN BERRYHILL: Yes, I had one quick comment and one question. Ms. Mann, I will be filing an UDRP response today on behalf of a gentleman and his wife who have eight children and the domain name is a substantial part of their business. Believe it or not, among the 16,000 worthless orphans you've seen in UDRP disputes, many of them do have families and are real human beings. Following up on the territoriality of trademarks, trademarks are also temporal. In any version of the clearinghouse, is there a mechanism for removing claims in the event the mark is abandoned, assigned, expired, or invalidated? I've always heard that this will be a proprietary database that won't be open to public inspection and challenge in the way that normal trademark registers are. That is, if someone tries to register a domain name, they are deterred by some claim in the database that may no longer be a supported claim. But they don't know that and there's no third-party mechanism for notifying the clearinghouse of invalidation of a mark or a successful challenge or expiration of the rights. Has there been any thought given to that? Thank you. >>BRUCE TONKIN: I think I will put that to staff rather than the panel. But let me make two comments on that. One comment is transparency, so whether the public can actually read the data in some way, maybe through some sort of Web interface as opposed to the registries which would have automated, you know, retrieval access, I'd imagine access could be different between public access to the data and registry access to the data. But coming back to your point about what happens if the data is no longer valid, perhaps the staff could respond on how that would be handled. >>KURT PRITZ: Well, the proposal that's written now calls for a regular renewal of the data. At one time, it was an annual -- you know, an annual revalidation of it. I don't think it's annual anymore. But it's regular. As far as a third party participating in that process. that's certainly not part of it. I'd want to hear anybody else's opinion about that. >>BRUCE TONKIN: I think the point John's making there is if a member of the public inspected an entry in the database and said that entry's wrong because the trademark's expired, for example, or wasn't renewed, is there a mechanism -- but like with WHOIS accuracy, that you would notify saying, "This data is no longer accurate" and there is some process for that data to be corrected. Just keep it to the staff. Is that something that's been thought through? >>J. SCOTT EVANS: What would happen is if a registry registered -- realized the rights and it is in the database and it is pulled and you're blocked and they've decided to have a sunrise, let's say, then you as the blocked party could bring a sunrise challenge to say that's no longer valid. So you do have, as a person, a chance to challenge. And then you have to validate our plan, the IRT plan, which you had to validate annually. And if you didn't validate, there were sanctions. >>BRUCE TONKIN: It seems to me we just need to clarify the validation process. I don't want to solve the problems here, but I think there needs to be a mechanism where someone can report. It is a bit different than what you are saying there, J. Scott, inaccurate data, have an inaccurate WHOIS and there is some mechanism for that to be deleted or corrected. >>KATHRYN KLEIMAN: Can I just make a real quick point on that which is that Jeff in drafting his IP claims, as I understand it, provided the registrant with information with a link directly to the trademark claim itself so they could see it. They could see the scope of it. They could see the language. They could see the category. That in itself reduced the chilling effects. So here that ability to have that linked, to be able to go in and see the data and evaluate it will help, not everybody but it will help; and it will reduce the chilling effects. >>BRUCE TONKIN: Thanks, Kathy. Wendy? I think we might be losing the order here. But go ahead, Wendy. >>WENDY SELTZER: Thanks. Wendy Seltzer. I'm here speaking as an individual and as founder of the Web site chillingeffects.org where we have a clearinghouse of complaints that have been made against online speakers and analyses of the letters that are sent and where we see a vast number of reasonable threats and a vast number of unreasonable threats that because they're made in legal context often have the effect of chilling an online speaker. Turning specifically to concerns with the Uniform Rapid Suspension process, my concern is not for the rights of the serial cybersquatter but for the process to take account of the inevitable false positives. We can't get to a perfect procedure. So how do we deal with the wrongful threats against perhaps nearly erroneous, perhaps maliciously made against somebody who has legitimate right or interest in a domain name. So a few specific suggestions that I want to float for consideration. The default timeline seems, while designed to achieve a rapid result, likely to take some names away from people who simply fail to respond, allow someone to reopen a proceeding as though he had never defaulted when he or she notices the complaint in queue or more likely notices that the domain has stopped functioning properly. A couple of other quick suggestions, an appeals process within the URS system so that we build a body of real precedent rather than just a mass of unreviewed decisions quicker and cheaper for the registrant than appealing to the ombudsman and allowing for the registrant to challenge an improper decision. And some review of the URS decision providers, a review or audit, to help ensure that the providers and panelists are following the standards that are, in fact, set out in any rapid suspension or decision process. >> Pardon me. We only have ten more minutes in this program, and we have quite a few people lined up. So if you don't mind, we have ten minutes before we finish. >>BRUCE TONKIN: Thanks. Thanks, Wendy, for making some positive suggestions for change, too, because that's always useful. Cross on to this mic. >>ALEX GAKURU: Thank you. My name is Alex Gakuru. I'm representing internet consumers from Africa and Kenya, noncommercial users. I will be quick. The board policy mandate to develop mechanism that protects legal rights of others seems to have morphed into all sorts of commercial interests of others. And so what about the human rights of all the other people that are on the Internet? The emphasis, the focus has been intellectual property until now. And I'm happy this improved version is just dealing with trademark, but it is of concern that the rights seem to have been changed into commercial rights and interests are now we have the trademark. I want to raise attention to RFC 1591. It specifically talks about the rights to names and touches on domain -- rights to names and trademarks. Now, alongside that and to be brief -- because of the shortness in time, I want to ask a simple question. When people in Africa finally get connected, because we are under 4% connected to the Internet, when we get there, shall we find any names still available? Or will they have all been taken up through the system that ICANN is enabling and in view of that RFC? Or should we have an equal right to have the names? Okay, that's question number one. Question number two is I want to ask on the URS, it presumes guilt until very complicated processes take place to perhaps confirm you're innocent. Does a registry -- if you make it mandatory, who will bear the legal burden and costs of a domain taken, if the registrant opts to take legal action for the damages for the time the domain was suspended, if it was a commercial, et cetera? I will stop there because I think my time is up. The rest I can always contribute elsewhere. Thank you for listening. >>BRUCE TONKIN: Thank you. Perhaps if I could just ask a quick response from staff on the legal things. I think we're saying, like UDRP, there is always the option to go to a legal court if you don't like the answer. And I guess the same with URS. Do you want to just respond on that -- on the liability? >>DAN HALLORAN: Yes, thanks, Bruce. I think we actually had that as one of the questions, or at one point we did. What should we do if it is taken down incorrectly? And there's going to be damages there. I think the IRT at times and we at times tossed around mechanisms like having bonds or something to -- and none of that has made it into the IRT. But it is a question for discussion for the GNSO. >>BRUCE TONKIN: Okay, thank you. >>PAUL FOODY: Hi, Bruce, Paul Foody. I registered my first domain in 1997. That to my mind gives me an existing use because at the time, there wasn't any use classification in the intellectual property system. What I'd like to know from the board, because you probably know these things, is when did the USPTO, WIPO, introduce a use classification for the Internet? Does it have global effect? Do you communicate with each other? Please don't answer the question right now because I realize that I'm running out of time. The second point is that there are a lot of people who come here and their voices are heard frequently. Wendy Seltzer, who speak before me, is on the board of the GNSO. When you've got a public open forum like this, let's give it to the public so that the public can speak. Again, as I say, I have got a lot of points. But in Sydney, I said something that was -- which was completely misconstrued, something about knowing what sort of things come from the Far East. My kids have been here for same amount of time as me. I left them on their own for two hours on Monday. They came back, they got Louis Vuitton. >>BRUCE TONKIN: Hang on. Is this relevant? >>PAUL FOODY: This is relevant, yeah. They have Louis Vuitton. They have Dolce Gabbana. They've got Gucci. They have tons of these. I'm pretty convinced based on the price they pay that they are all fake. Now, the fact is that the people who hold these rights are allowing this to happen. Why? Because they want their brand to reach, in my opinion, I should add -- it is in their interest for their brand to achieve a certain level of market awareness. And at that point, once that's happened, they can either then charge full price. It is my opinion that the trademark lawyers have allowed the Internet to develop the way it has. They have allowed the Internet to become absolutely an essential part -- >>BRUCE TONKIN: I think we have hit your two minutes. >>PAUL FOODY: I apologize. I will move to the back queue. >>BRET FAUSETT: My name is Bret Fausett. I found both today and in the written materials that the post-delegation dispute resolution process is awfully abstract. I would appreciate either as a question that you can answer today and more particularly in future written materials some really concrete examples of what constitutes these bad actor registries. We talk about it as though it is a common, known term, but I don't think it is. And if there are current G or ccTLD registries that you would consider bad actor registries, I would love to hear the examples. If there are things that people have imagined that would -- that everyone would agree violate these rules, I would love to hear those examples. I would love to see those examples incorporated into whatever comes out of the process. >>BRUCE TONKIN: That's a good point with a lot of processes, is having what I would call the case studies or test cases. And you use the test cases to judge whether the policy is doing its job or not so I think it is good advice. Thanks. Phil. >>PHILIP CORWIN: Phil Corwin, Internet Commerce Association. And throughout this process, so over several meetings, we have been striving to make sure that the due process rights of legitimate registrants are protected and no way trying to protect intentional cybersquatters. Three quick points. One, we're very concerned that the new proposed test and the staff proposal, while the original URS was proposed as a narrower version of the UDRP with the registration requirement, with a higher evidentiary standard, but with a three-part test, the staff has now proposed an "and" or an "or" between the last two parts and that converts it to a two-part test with substantial potential to displace the UDRP. We think that's a real mistake and unacceptable. Second, as this goes forward and we're hoping we can get good consensus here that protects everyone, rights on both sides, let's remember that while 70% of UDRP's default and the URS is obviously designed to reach at least some significant subpart of those default cases, that of the remaining 30%, the decisions go about 50/50. So we want to make sure those don't get swept in. And those really involve what the cost of filings are going to be. And we are concerned about shot-gun complaints, 50 names at a time and with inadequate resources to really give due process on each of those separate names. And, last, since what we're doing here, everyone knows, much of what's done on new gTLDs may make its way into incumbents. We would hope without delaying anything to give some consideration. The staff document says there will be no contractual relationship between ICANN and the selected URS arbitrators. We think that should be reexamined. We think a contractual relationship would be good for complainants and registrants. It would bind the URS providers to giving predictability to both sides by binding them to some kind of following their own precedence, to ensuring neutrality of examiners, give ICANN some enforcement mechanism short of withdrawing accreditation. We saw with RegisterFly that just having a death-sentence option for ICANN is not effective. You need some objective standards for judging performance. Accreditation is about capacity. Contracts are about performance after you're accredited. So we hope that's considered, if not in the initial round, as this is developed. Thank you very much. >>BRUCE TONKIN: Have to stop you there. Thank you very much for those constructive suggestions, too. J. Scott? >>J. SCOTT EVANS: Hi, I'm J. Scott Evans from Yahoo! and I'm newly installed president of the intellectual property constituency. I worked with Kathy Kleiman, and we drafted the UDRP final version with Louis Touton and a group of other talented people, many of whom are here today. We want to let you know we appreciate you having this session. We appreciate that you're listening to our community. We want to offer ourselves as resources to assist you to answer your questions and to work with you because we know that there's a problem, and the problem affects noncommercial constituents. It affects trademark owners. It affects mothers and daughters and children and billion-dollar companies. We want to work together to find a solution to the problem. We were asked on the IRT to come up with solutions that would not slow down the process and do so in a very, very short timeline. We did the very best we could. We realize that we're drafting ambiguities and questions about wording. And all of that was driven by the time. We had to hold back the fences from trademark owners who want to burn the Internet with everything they can. We want to hold back people who think that trademark owners are a bunch of lunatics that want to take over the world and secretly meet everywhere to take over the world. We just want to solve a problem. That's what we're here to do. We want to work with registries, registrars, NCUC. That's what we're here for. We're problem solvers. We want to solve the problem. Thank you for the opportunity, and we look forward to working together in the near future. [Applause] >>BRUCE TONKIN: Thank you, J. Scott. >>KONSTANTINOS KOMAITIS: Yes, hello. Dr. Konstantinos Komaitis, and I'm a trademark law professor. And I would like to ask something. Ten years ago we used the same language to justify the UDRP and we got the blessing by WIPO and the trademark law community. Ten years later, we use exactly the same language to justify a system on top of the UDRP and my question is why don't we proceed to a full review and amendment of the UDRP. It's been two years, and there has been a massive amount of case law. So why don't we go back, learn from the lessons and try to incorporate the concerns that the intellectual property owners are having, trademark owners, within the UDRP instead of creating a system on top. Thank you. >>BRUCE TONKIN: Thanks for the suggestion. And, certainly, I think that's something you can put up through the GNSO. I mean, it is a normal part of the GNSO's work to review policy. So I'm sure that's on their list. Kristina? >>KRISTINA ROSETTE: Kristina Rosette, IPC representative to the GNSO council speaking in my personal capacity. This is a random selection of points to answer various questions that came up. First, Kathy, with regard to the URS, there is a provision at least in what the IRT drafted for de novo appeal. Yeah. Second, with regard to John's questions, not only is there a requirement in the IRT recommendation that the trademark owner annually validate -- or authenticate, I think is probably the more accurate word we should be using, the data, but they need to accompany that authentication with a declaration or some kind of affidavit. And it was our recommendation that if it turned out that the trademark owner had either falsely submitted information or falsely withheld information, that the clearinghouse have the ability to oppose some kind of penalty. You know, it was one of those details that, frankly, we were just worried about getting the report done so we figured we would leave it for later. And I guess another point is with regard to the access to the data that -- by the public to the data that's in the clearinghouse, I think that would probably not meet with a whole lot of opposition on an incident-by-incident basis. For example, for the IP claim you would get a link to the particular data entry. What I do think you would get resistance from the trademark community is if you could, basically, have an open database of everything that's in the IP clearinghouse so that you could find out, "I want to see everything that Coke has in here. I want to see everything that Microsoft has in here." I think that's the type of thing that you would likely meet resistance on. And, finally, for the staff, I noticed that there's a discrepancy in the IP clearinghouse as to what constitutes an identical match for purposes of the IP claim. The language that the IRT used was taken from dot tel which was taken from dot Asia which was taken from dot MOBI. So given that this is language that, frankly, has been used successfully before and seems to have been effective, I would encourage them to in the next iteration go back and put that back in. >>BRUCE TONKIN: Okay. We'll just take one more question, and then I'm going to hold it at that point because I have let everybody had a chance to speak because we have to end it at some point. I noticed you came back a second time, which is fine; but we're just running out of time. >>PAUL FOODY: As long as -- I appreciate that. >>ZAHID JAMIL: First of all, I would like to acknowledge and thank Kathy for the NCUC's constructive invitation to work with goodwill. We look forward to the sentiment continuing in the GNSO. So thank you for that. Second, making the URS a best practice is like saying "seat belts are optional." Thirdly, I agree with Kristina. If you narrow the meaning of "identical IP claims" and sunrise, then that has a knock-on effect in the URS since the warranty as part of the IP claims will be unavailable in the URS proceeding. Fourthly, with regard to post-delegation, by narrowing the scope to only where a registry allows infringement through affirmative conduct, a registry that allows infringement through omission or negligence, i.e., turning a blind eye, won't be subject to the post- delegation dispute resolution policy. >>BRUCE TONKIN: Okay. I will draw the session to a close. We are 20 minutes over the allotted time. It was good that we had a chance to talk on this issue. [Applause]