Presentation by Gareth Dickson to Nominet's DRS Experts' Meeting on 2 February 2016, on ICANN's online rights protection mechanisms (RPMs) and other intellectual property remedies

1. attorney advertisement
© Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, UK. The content of this
packet is an introduction to Cooley (UK) LLP’s capabilities and is not intended, by itself, to provide legal
advice or create an attorney-client relationship. Prior results do not guarantee future outcome.
ICANN RPMs: Evolution,
Revolution, or Better the Devil
You Know?
Gareth Dickson, Cooley (UK) LLP
Nominet DRS Experts’ Meeting 2016

2. Understand what
ICANN is and is
not
Review
mechanisms to
protect rights within
the legacy gDNS
Consider the
advent of the new
gTLDs and their
RPMs
Identify new but
unofficial RPMs
Highlight the RPM
issues now under
review at ICANN
Assess whether
there is room for
further innovation
in ICANN’s RPMs
Over the next 45 minutes we will…

3. BEYOND THE ACRONYM, WHAT IS ICANN, REALLY?
Internet Corporation for Assigned Names
and Numbers

4. • Primarily a technical organisation concerned with ensuring the
domain name system works.
• Policy is consensus-based, often referred to the “Bottom-Up, Multi-
Stakeholder” model.
• Constituencies within ICANN represent different, often competing,
interests. The Governmental Advisory Committee (“GAC”)
commands significant attention and deference.
• Influence on DNS extends far beyond technical matters, particularly
in IP matters.
What is ICANN?

5. The Three Layers of Digital Governance

6. THE GOOD, THE BAD AND THE UGLY
Existing mechanisms to protect rights in
the gTLD DNS

7. Preventative Defensive registrations
Curative
Court proceedings
UDRP
The domain name is identical or
confusingly similar to a trademark
or service mark in which the
complainant has rights; and
The registrant has no rights or
legitimate interests in respect of
the domain name; and
The domain name has been
registered and is being used in
bad faith.
RPMs

8. December
2005
GNSO
begins
policy work
on DNS
expansion
September
2007
GNSO
concludes
its work
June 2008
New gTLDs
approved at
ICANN 32
June 2012
Reveal Day.
March 2013
New RPMs
begin to bite
March 2016
ICANN 55
THEN…

9. "I AM ALWAYS DOING THAT WHICH I CANNOT DO, IN ORDER
THAT I MAY LEARN HOW TO DO IT." – PABLO PICASSO
Advent of the new TLDs

10. Trademark
Clearinghouse
Uniform Rapid
Suspension System
Trademark Post-
Delegation Dispute
Resolution Procedure
New gTLDs and New RPMs
https://community.icann.org/display/gsecomms/Speakers+Bureau+Handouts

11. “The Internet is expanding drastically....right now.”
http://www.trademark-clearinghouse.com/
• Launched March 2013 as “the central repository for validated
trademarks for the purpose of protecting brands in ICANN's new
gTLD program”.
• Enabled Sunrise applications and Trademark Claims service in new
gTLD launches.
• Verification and registration of one mark for one year – US$150.
• Low uptake – only 38,000 marks in total – and limited “protection”.
Trademark Clearinghouse (TMCH)

12. (a) The registered domain name is identical or confusingly similar to a
word mark:
(i) for which the Complainant holds a valid national or regional
registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect
at the time the URS complaint is filed; and
(b) The Registrant has no legitimate right or interest to the domain
name; and
(c) The domain was registered and is being used in bad faith.
Uniform Rapid Suspension Service (URS)

13. URS v. UDRP
URS
New gTLDs
only (at
present)
Suspension
$375+ for
Complaint
(500 words);
$400+ for
Reply (2,500
words)
Must be clear
and convincing
1 expert at first
instance; 1 or
3 experts on
appeal
UDRP
All gTLDs and
some ccTLDs
Transfer or
cancellation
$1,300+ for
Complaint
(5,000 words);
no fee for
Reply (5,000
words)
Balance of
probabilities
1 or 3 experts;
no appeal

14. Virgin Enterprises Limited v. lawrence fain (FA1402001545807)
• “the only use of the disputed domain name … is what appears to be a
generic, monetized parking page for the registrar … which does not
appear to include any references to Complainant, Richard Branson or
the BRANSON trademark.
• Taken together, these issues – that is, failure to establish in the record
that the relevant trademark is strong plus the absence of any evidence
that the domain name is currently being used in a manner that is
associated with that trademark – do not convince this Examiner by clear
and convincing evidence that the Registrant has no legitimate right or
interest to the domain name or that the domain was registered and is
being used in bad faith.”
Famous fails in the URS: <branson.guru>

15. Netflix, Inc. v. Masterclass Media et al. (FA1509001639527)
• Respondent: “I registered this domain with the intention of creating a fan
site, with news and updates on the Complainant’s service. I have all
intention of proceeding while respecting the Complainant's marks”.
• Expert:
• “Such a use by Respondent could evidence a legitimate noncommercial or fair
use under the Policy. … Respondent has failed to put into the record any facts
which support his claim.
• URS paragraph 8.4 states ‘[i]f the Examiner finds that … genuine issues of
material fact remain in regards to any of the elements, the Examiner will reject
the Complaint under the relief available under the URS.’ Because this record
raises, but does not provide adequate information to conclude whether or not
Respondent has a legitimate right or interest to the domain name, I must find
for the Respondent on this element.”
Famous fails in the URS: <netflix.news>

16. Banco Bilbao Vizcaya Argentaria v. Gandiyork SL (FA1403001548656)
• “Respondent has stated that it ‘provide[s] category 44 (*.LAND) services
to Bellreguart, Beniarjo, Villalonga and Almoines, which are 4 neighboring
towns’ – that is, towns that start with the letters B, B, V and A. The
Respondent’s provision of a ‘Superior Agronomical Engineer degree’ and
‘a map of the area’ are also informative.”
• Although Respondent “used the disputed domain name in connection
with a monetized parking page that contains links related to the BBVA
trademark, there is a key distinction in this case. Namely … the
Respondent in the instant case has stated that it was ‘most surprised’ to
learn of the page, which differed from its own review of the website, and
that its attempts to ‘cancel’ the monetized parking page were
unsuccessful because ‘the domain is blocked because of this dispute.’ …
this explanation from Respondent is plausible.”
Famous fails in the URS: <bbva.land>

17. • Administrative proceeding determined by external experts.
• Complainant is a trademark holder (registered or unregistered)
claiming that one or more of its marks have been infringed, and
thereby the Complainant has been harmed, by the registry
operator’s manner of operation or use of the gTLD. Threshold
review.
• Objections to conduct at top and second level: both require
affirmative conduct by registry; both “clear and convincing”.
• No objections have been filed; none are expected.
Trademark Post-Delegation Dispute
Resolution Procedure (TMPDDRP)

18. • Top level – registry operator’s conduct must cause or materially
contribute to the gTLD infringing the mark.
• Second level – complainant must prove:
(a) there is a substantial pattern or practice of specific bad faith intent by
the registry operator to profit from the sale of trademark infringing domain
names; and
(b) the registry operator’s bad faith intent to profit from the systematic
registration of domain names within the gTLD that are identical or
confusingly similar to the complainant’s mark, which infringe the mark.
Insufficient for registry to merely be on notice of infringements: requires
“encouragement, inducement, initiation or direction of any person or entity
affiliated with the registry operator” for profit.
Trademark Post-Delegation Dispute
Resolution Procedure

19. Four new
grounds for
objecting to
application
for new gTLD
String
Confusion
Objection
Legal
Rights
Objection
Community
Objection
Limited
Public
Interest
Objection
Module 3 of the Applicant Guidebook

20. • “The applied-for gTLD string infringes the existing legal rights of the
objector.” Available to “rightsholders”.
• Test: whether the “potential use” of the applied-for gTLD by the
applicant:
• takes unfair advantage of distinctive character or reputation of the
objector’s registered or unregistered trademark or service mark (“mark”),
or
• unjustifiably impairs distinctive character or reputation of the mark, or
• otherwise creates an impermissible likelihood of confusion between
the applied-for gTLD and the objector’s mark.
Legal Rights Objections

21. • “There is substantial opposition to the gTLD application from a
significant portion of the community to which the gTLD string may be
explicitly or implicitly targeted.” Available to “Established institutions
associated with a clearly delineated community”.
• Test:
• The community invoked by the objector is a clearly delineated community;
• Community opposition to the application is substantial;
• There is a strong association between the community invoked and the
applied-for gTLD string; and
• The application creates a likelihood of material detriment to the rights or
legitimate interests of a significant portion of the community to which the
string may be explicitly or implicitly targeted.
Community Objections

22. • “The applied-for gTLD string is contrary to generally accepted legal
norms of morality and public order that are recognized under
principles of international law.”
• No limitations on who may file an Objection, subject to a “quick look”
designed for early conclusion of frivolous and/or abusive Objections.
Limited Public Interest Objections

23. • Three forms:
• consensus that an application should not proceed. Creates “strong
presumption” that the application should not be approved.
• concerns about an application “dot-example.” Board is expected to enter
into dialogue with the GAC to understand the scope of concerns and
explain its decision.
• corrective requirement that raises a strong presumption that the
application should not proceed unless remediated as per the Guidebook.
• To be submitted by the close of the Objection period; Applicant to
respond within 21 calendar days.
GAC Advice

24. • Board could consult with independent experts, e.g. those hearing
objections in the New gTLD Dispute Resolution Procedure, in cases
where the issues raised in the GAC advice are pertinent to one of
the subject matter areas of the AGB.
• BUT no limit on what issues could be raised, even if already
addressed by AGB criteria; and GAC was not held to the deadlines
prescribed in the AGB.
• Precursor to assertiveness of some GAC reps regarding
applications for <.wine> and <.vin>, and TLDs which coincide with
strings of national, cultural, geographic or religious significance.
• Perceived duplication of work where appeared governments didn’t
want to compromise.
GAC Advice

25. • Aside from GAC Advice, all RPMs are targeted at specific abuses
and are more likely to be curative than preventative.
• GAC sees RPMs and content regulation as unfinished business.
• ICANN community is diverse and compromise often offends
everyone while giving no-one what they want.
• ICANN does not want to take decisions itself: relies on independent
experts.
View of RPMs suggested by gTLD program

26. CARROTS AND STICKS MAKE AN INTERESTING MIX
Advent of the new RPMs

27. <trademark.sucks>
GA price for
TM owner
$2,499
“Block” price
for standard
names $199
GA price for
TM critics
$10
Sunrise
Price $2,499
• www.registry.sucks
“dotSucks is designed to help
consumers find their voices and
allow companies to find the
value in criticism”
• Registry Premium Names
• Market Premium Names
• Block “standard” names

28. <trademark.feedback>
.feedback
Standard
$39.99
TM claims
$5,000, 2
year limit
All sites
must contain
feedback
Self-serve
$720
• http://www.nic.feedback/faq/
“To enable a universal way to
give feedback on everything. …
you name it and we help collect
feedback on it.”
• Defaults to forum for feedback
concerning trademark
• “UDRP-proof”
• Free Speech Partner Program
/ EAP

29. <trademark.tickets>
Fast-track
application for
TM owners
Standard
applications
can be
challenged by
TM owners
Winner is first
rightsholder to
apply
• http://tickets.tickets/domains-
watch/
“Domains Watch … ensures that
genuine rights holders around
the world have the best possible
opportunity to secure their
domain assets at the point of
registration.”
• “the ultimate anti-
cybersquatting system?”
Domain Incite

30. <trademark.donuts>
Stops a trade
mark from
being
registered
Applies across
all Donut
registries
Approx. $3 per
name per year
• http://www.donuts.domains/se
rvices/dpml
“Trademark holders can block
their trademarks from
registration at the second level
across all Donuts domain
names.”
• Piggy-backs off TMCH
• Doesn’t apply to Premium or
Reserved Names

31. • BT v. One In A Million – still good law, according to the IPEC.
• Online Dispute Resolution – Civil Justice Council modelled its
recommendations for online dispute resolution on procedures like
the DRS.
• Defensive registrations and defensive applications
Remedies outside ICANN

32. “IF I HAD ASKED PEOPLE WHAT THEY WANTED, THEY WOULD
HAVE SAID FASTER HORSES” – HENRY FORD
Final Issue Report on a PDP to Review
All RPMs in All gTLDs

33. GNSO
RPM PDP
Phase 1
TMCH
URS
PDDRP
Phase 2 UDRP
Substance
Procedure
Two-phase review of all RPMs

34. UDRP
Substance
Appeals
Limitation
periods
“and” vs “or”
Procedure
Presumptions
Panelist
selection
Damages /
costs
Two-phase review of all RPMs

35. ICANN’S FINAL FRONTIER?
Content Regulation

36. “Registrar shall take
reasonable and prompt
steps to investigate and
respond appropriately to
any reports of abuse.”
What “abuse” is
covered?
What is a “report”?
What is an “appropriate”
response?
Registrar Accreditation Agreement 2013,
Clause 3.18.1

37. The Three Layers of Digital Governance

38. President’s Opening Speech, ICANN 54
Fadi Chehadé on ICANN’s remit with regard to website content (click here to view online)

39. President’s Opening Speech, ICANN 54
“We do not have responsibility in the upper layer... Let me be superbly
clear here. The community has spoken and it’s important to underline
that in every possible way. ICANN’s remit is not in the blue layer. It is
not in the economic and societal layer… So when people ask us to
render judgment on matters in the upper layer, we can’t… So let’s be
superbly clear that our role stops at this yellow layer.”
“I also think as a community, we should understand that we have
responsibilities in that ecosystem. Our responsibilities include, the
importance of, once determinations are made, to respond to these. How
do we respond to these? I hope voluntarily.”
“all of us should work together. But it’s not at ICANN. Because ICANN’s
remit is not in determining what action to take.”

40. CAN RPMS BE BETTER IN THE NEXT ROUND OF DNS
EXPANSION?
Conclusions

41. • Lessons learned include:
• TMPDDRP is not useful.
• Utility of URS is decreasing.
• There is appetite for preventing clearly illegal content, but ICANN needs
a third party to make relevant determinations. It needs help.
• The UDRP may be reviewed at some point in the near future, but not
necessarily reformed.
• gTLD objections should have appeal process, be more consistent, and
be cheaper.
• Court-based remedies remain attractive, especially if BT v. One In A
Million can be relied on.
Evolution, Revolution, or Better the Devil
You Know?

42. attorney advertisement
© Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, UK. The content of this
packet is an introduction to Cooley (UK) LLP’s capabilities and is not intended, by itself, to provide legal
advice or create an attorney-client relationship. Prior results do not guarantee future outcome.
ICANN RPMs: Evolution,
Revolution, or Better the Devil
You Know?
Gareth Dickson, Cooley (UK) LLP
Nominet DRS Experts’ Meeting 2016