WIPO Observations on New gTLD Dispute Resolution Mechanisms
For ICANN’s New gTLD Program, a range of "Rights Protection Mechanisms" (RPMs) has been established; a WIPO summary of the key features of these new gTLD RPMs is available on the WIPO Center’s Trademark Rights Protection Mechanisms for New gTLDs webpage. Prior to any new gTLDs being approved and becoming operational, such RPMs include several "pre-delegation" objection procedures. The WIPO Center has been appointed by ICANN as exclusive provider of dispute resolution services for trademark based pre-delegation Legal Rights Objections, described in more detail on the WIPO Center’s dedicated portal: Legal Rights Objections under ICANN’s New gTLD Program – Filing a Legal Rights Objection at WIPO: What You Need To Know. Below is a summary of broader WIPO policy observations on ICANN’s trademark-based New gTLD dispute resolution mechanisms.
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For over a decade, WIPO has addressed questions raised by the intersection of the Domain Name System (DNS) and intellectual property (IP) laws. Notably, in 1998 and 2001 WIPO undertook two international consultation processes to develop specific policy recommendations. The Final Report of the First Process provided the blueprint for ICANN’s adoption of the globally accessible Uniform Domain Name Dispute Resolution Policy (UDRP), a tool for addressing domain name-related trademark abuse (“cybersquatting”). The Second Process explored policy options for protection of non-trademark identifiers in the DNS. In 2005, WIPO further produced, at ICANN’s request, a report on New Generic Top-Level Domains: Intellectual Property Considerations which inter alia advised that in addition to the UDRP as a curative remedy, additional safeguards including for preventive trademark protection in any New gTLDs would be necessary.
Amidst much consideration and debate, the landscape of the current DNS – the Internet naming architecture – is poised to undergo considerable change following ICANN’s June 2011 decision to begin accepting applications, as of January 2012, for New gTLDs. This program is expected to bring exponential growth in the number of gTLDs beyond those available today, such as .com or .org. Many stakeholders, including WIPO and the International Trademark Association (INTA), have cautioned that any rollout by ICANN of New gTLDs must be carefully managed. Introduction of New gTLDs should be deliberate and should effectively address the widely recognized potential increase of online trademark abuse and consumer confusion.
With the introduction of vast numbers of New gTLDs, equally significant changes to the global DNS landscape have been occurring through ICANN’s approval in early 2010 of a phased introduction of Internationalized Domain Names (IDNs), i.e., domain names in local language characters such as Arabic (العربية), Chinese (中文), or Cyrillic (Цыриллиц).
Broadly speaking, WIPO stands for balanced and accessible IP protection and abuse prevention mechanisms that contribute to innovation while safeguarding a stable, credible DNS – for the benefit of all Internet users.
WIPO continues to collaborate with stakeholders in seeking the considered integration of trademark norms in existing and New gTLDs. This collaboration includes WIPO Center proposals to ICANN of scalable Rights Protection Mechanisms (RPMs) aimed at preventing and addressing trademark abuse in the DNS while striking a balance with practical interests and legitimate expectations of a range of DNS actors, from registration authorities (e.g., registries, registrars, and ICANN itself) to domain name registrants. The WIPO Center has additionally offered considered input to ICANN, including through the latter’s Implementation Recommendation Team (IRT), throughout the development of a range of New gTLD RPMs. A record of WIPO input to ICANN can be found on the Selected WIPO Correspondence with ICANN webpage.
In addition, DNS-related matters including New gTLDs form part of the agenda of WIPO’s Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT).
A WIPO summary of the key features of ICANN’s new gTLD RPMs is available on the WIPO Center’s Trademark Rights Protection Mechanisms for New gTLDs webpage.
In terms of broader WIPO Center policy undertakings in relation to ICANN’s trademark-related RPMs, the WIPO Center has observed that in processes characterized by politicized attrition, appropriately reflecting existing trademark norms in an expanding DNS appears to have posed significant challenges to ICANN stakeholders. Nevertheless, at the end of the day, RPM ideas must come together through a cohesive vision; the RPMs must work – for everyone. More specifically, the WIPO Center has expressed the following core concerns:
- By focusing on “affirmative conduct,” the Post-Delegation Dispute Resolution Procedure (PDDRP) may end up missing an opportunity for registration authorities to construct realistic safe harbors while responsibly partnering towards a credible DNS.
- To truly add value as an RPM, i.e., to be a meaningful complement to the existing UDRP, Uniform Rapid Suspension system (URS) remedy and procedure must be proportionate.
- Any ICANN-sponsored Trademark Clearinghouse (including RPMs using such centralized data), must not unfairly burden rights holders in the treatment of legitimately obtained trademark registrations and should not unfairly capitalize on trademark owners’ enforcement concerns.
Overall, the WIPO Center has observed that the numerous ICANN committees and processes have fostered primarily registration-driven RPM designs which tend to run counter to the recommendations of trademark owners and experts including international trademark representative bodies. Even if registration interests seem to find trademark protection discussions somewhat uncomfortable, the envisaged DNS expansion demands international cooperation for responsible and forward-looking partnership with trademark owners on legal norms and safe harbors, as an alternative to fragmented enforcement options.
Prior to ICANN’s approval of a New gTLD, third parties will have an opportunity file a formal objection to a proposed application on several grounds, including “legal rights” where the applicant’s potential use of its TLD would infringe the objector’s trademark (or IGO) rights.
In December 2007, ICANN sought “Expressions of Interest from Potential Dispute Resolution Service Providers for [its] New gTLD Program.” In January 2008, the WIPO Center signaled its readiness to assist ICANN in devising and applying appropriate trademark-based New gTLD RPMs. From that time, using the WIPO Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet as a foundation, the WIPO Center has collaborated with ICANN on the development of substantive criteria and procedural rules for pre-delegation Legal Rights Objections as found in module 3.5.2 of the ICANN Applicant Guidebook. The WIPO Center subsequently accepted to administer disputes under the ICANN Legal Rights Objection Procedure, and in connection therewith, has provided to ICANN WIPO Rules for New gTLD Dispute Resolution including a Schedule of Fees and Costs.
For more information, please visit the WIPO Center’s dedicated portal: Legal Rights Objections under ICANN’s New gTLD Program – Filing a Legal Rights Objection at WIPO: What You Need To Know.
Given that many applicants would be unlikely to apply for a New gTLD where pre-delegation objections would be readily foreseen, the WIPO Center has observed that the greater potential for trademark abuse may well materialize after New gTLDs are delegated and become operational, in particular once any second-level domain name registrations become available.
From early 2008, the WIPO Center advocated to ICANN the possible respective advantages to DNS stakeholders of a permanent administrative (court alternative) option for brand owners to file an objection against a registry operator whose operation or use of its New gTLD causes or materially contributes to systemic trademark abuse. In early 2009, the WIPO Center submitted an outline for such a post-delegation procedure to ICANN. This WIPO proposal was intended assist ICANN’s compliance oversight responsibilities by encouraging responsible conduct by relevant actors, thereby enhancing the security and stability of the DNS without the need for a multitude of fragmented, lower-level enforcement efforts.
From this foundation, the PDDRP as adapted by ICANN has rather focused on registry operator “affirmative conduct,” in part due to registration authorities’ reluctance to focus on the design of safe harbors. Even so, the WIPO Center believes that the ICANN contractual framework may yet offer an opportunity for bona fide stakeholders to positively address their respective rights and responsibilities in a more realistic fashion. The WIPO Center has raised for ICANN’s attention the possibility of a range of non exclusive consideration factors to draw out safe harbors and complement the PDDRP substantive criteria:
- Whether the registry operator intentionally induced, knowingly permitted, or could not have reasonably been unaware of abusive domain name registrations in the TLD.
- Whether the registry operator employed meaningful registry-appropriate trademark RPMs to reasonably address abusive registrations at all registration phases (e.g., launch and thereafter), including where appropriate (re-)designing and implementing additional RPMs in response to the nature of observed trademark abuse.
- Whether the registry operator’s manner of operation or use of the TLD is consistent with the representations made in the TLD application as approved by ICANN or the terms of the New gTLD Agreement.
- Whether registry-employed RPMs (which may need to be revised or indeed created in response to evolving DNS realities) are accessible to trademark owners in real-time, not be accompanied by onerous fees, promptly followed-up on, and designed to meaningfully cover the principal abuse scenarios.
- Whether trademark owners invoking RPMs have included proof of applicable rights and undertakings reasonably connected with the remedy being sought, as well as all reasonably available registrant-identifying information and a description of the systemic or otherwise relevant nature of the abusive conduct.
- Whether trademark owners would have reasonably demonstrated the appropriateness of turning to a PDDRP proceeding rather than to other means reasonably at their disposal, i.e., where appropriate, trademark owners would have exhausted all other reasonably available means to address infringing abuses directly.
Given the perceived convergence of registry, registrar, and registrant roles within the DNS, the WIPO Center has recommended that ICANN consider applying the concept behind its post delegation proposal (including safe harbors) to address registrar conduct. (This also follows approaches by the WIPO Center and others to ICANN concerning the conduct of specific registrars observed to have engaged in conduct that frustrated the spirit, if not the letter, of the UDRP and the ICANN Registrar Accreditation Agreement.) Without procedures of this nature, ICANN and its stakeholders, including trademark owners, domain name registrants, and indeed registration authorities themselves may see an unnecessary flow of resource consumptive legal disputes.
To add value as a trademark enforcement option, any expedited suspension mechanism must optimally co-exist with, yet be sufficiently distinct from, the time-tested UDRP. Yet, the ICANN URS design which, along a similar initial timeline as the UDRP (and with several appeal possibilities), provides for the temporary suspension of an abusive domain name in obvious cases, seems relatively overburdened. Thus, it remains to be seen whether the URS will be a meaningful complement to the UDRP.
Since its April 2009 proposal to ICANN for a streamlined UDRP complement, the WIPO Center has advocated that such a mechanism could operate on a respondent default basis – that is, without the need for panel appointment in the absence of a filed response; naturally, a critical part of such a mechanism would be appropriate registrant safeguards.
As much as DNS stakeholders may benefit from Trademark Clearinghouse-held data (e.g., for streamlining invocation of trademark rights in particular RPMs), WIPO believes that the Clearinghouse should not unfairly burden rights holders in the treatment of trademark registrations legitimately obtained through examination and registration systems as applied in many global jurisdictions. Rather, a more practical challenge/objection procedure could resolve alleged inappropriate invocation of rights (i.e., where such rights would have formed the basis for inclusion in the Clearinghouse) in specific contexts.
The Clearinghouse furthermore should not unfairly capitalize on trademark owners’ infringement concerns; particularly where a significant function of the Clearinghouse will be to facilitate defensive registrations (such registrations representing a major cost burden for trademark owners as it is), registration authorities should contribute financially to Clearinghouse operations. Operating the Clearinghouse on a cost recovery basis in the global public interest would help contain stakeholders’ respective costs.
Additionally, ICANN’s envisaged limitation for Sunrise periods and Trademark Claims to identical matches with a word mark, and only at TLD launch would miss many abusive domain name registrations, causing substantial financial and enforcement burdens for trademark owners and an increased potential for consumer confusion.
Following WIPO’s provision to ICANN of the blueprint for the UDRP, the WIPO Center’s day to day non profit UDRP stewardship has been critical to the credibility and effectiveness of this global resource, and highlights the need for professional investment in New gTLD RPMs. The WIPO-led international consultation process that produced the UDRP counsels not to let political expediency or commercial motives compromise IP mechanisms which aim to deliver fair results through due process.
An illustration of the importance of considered management of such public resources can be seen in WIPO’s provision of such global UDRP facilities as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, which reflects jurisprudential trends observed from over twenty two thousand UDRP and related ccTLD cases decided by over 450 WIPO-appointed experts; the complementary, real-time WIPO UDRP Legal Search Index; WIPO pioneered eUDRP filing; and the WIPO Advanced Workshop on Domain Name Dispute Resolution and WIPO Panelists Meetings, among many other freely available WIPO resources.
- WIPO gTLD Reports
- Selected WIPO Correspondence with ICANN
- WIPO General Assembly 2012 Document on Internet Domain Names (Also available in French and Russian; other languages will follow).
- WIPO Conference: 10 Years UDRP – What's Next? (Program and Presentations)
- WIPO Center Press Room