Institute for Internet Policy & Law @ Beijing Normal University

Submitted to ICANN by Hong Xue, Chinese Domain Name Users Alliance

April 8, 2010

The Proposals seem a follow-up to the Fast Track IDN ccTLD Implementation Plan. Given that a request for a synchronized IDN ccTLD must have completed the String Evaluation in the Fast Track Process, the proposals, obviously, are patches to redress the insufficiency or unthoughtfulness of the original one. Although no one would really appreciates the patchwork, which would inevitably complicate the implementation, these remedial proposals do capture the most critical issues, particularly multiple corresponding strings deemed equivalent to one IDN ccTLDs. The issues are by no means new to the community or ICANN. During the policy develop process and implementation plan drafting process, the string equivalence or variants issues were repeatedly, consistently and vocally addressed by a few non-Latin script communities. For instance, both ALAC and APRALO made the submissions. After so many rounds of public consultations, it has been widely understood that solution to equivalent strings or variants is the center piece for implementation of IDN ccTLDs in the relevant IDN communities. No solution available, hardly IDN ccTLDs workable. This is why there were strong repercussions from the IDN communities after the Fast Track implementation took off. It is indeed positive that ICANN eventually moves to solve such “significant” problem for the communities. If the Fast Track was crafted to address the pressing need of non-Latin script users and non-solution to equivalent strings or variants would pose “significant problem for the community”, I cannot help but ask why such measures could not be incorporated into the implementation plan in the first place and have to be deferred to such a supplementary document.

Prof. Hughes and a group of J.D. students from Cardozo Law School paid a short visit to BNU law school. Prof. Zhao, Dean of BNU Law School, had a short meeting with Prof. Hughes and his students. They talked broadly about criminal justice and many other legal issues. Prof. Xue organized the whole event and acted as the interpretors at the meeting. Later, Prof. Xue and Prof. Hughes gave a joint lecture to American and Chinese students at a lecture hall. Prof. Xue’s lecture was well prepared and presented obviously.

I went through the two strawman proposals carefully and found that many of the ALAC’s suggestions are properly reflected.

I’ve the following thoughts for the community to consider.

1. With respect to the Strawman proposal on Clearing House, I can see significant improvements, such as the item on “identical match”, which is basically consistent at-large discussions.

But the following issue still concerns me:

“Nationally Registered Marks, from all jurisdictions, including countries where there is no substantive evaluation, and no common law rights except for court validated common law marks (with appropriate fees for validation).”

When comparing nationally registered marks and common law marks, I mentioned that the advantage of adopting “nationally registered marks” is that they have clear specifications (territory, presentation of the mark, classes of goods or services, term of protection) shown on the registration certificates and can easily be tabled into the database.

The common law rights are comparatively ambiguous. If a court validation can remedy their ambiguity, then it is not the “appropriate fees” but  clear decisions with the reasons of validation of the marks, from which we can see the goods or services on which the marks are used, duration of use and territorial protection (nationally or only locally).

I suggest change into “except for court validated common law marks (with appropriate reasons for validation)”

2. With respect to the URS, I can see improvements, such as 20-day notice, applicable to registered marks only and specially “answers after default.”

On the other hand, I have still a couple questions and concerns.

a) Mandatory URS

Although it seems consensually agreed by all the stakeholder, I still believe it should be best-practice rather than mandatory.

b) Element of complaint & evaluation

Interestingly, Rule 56 of U.S. Fed. Rule of Civil Procedure on summary judgment is cited as the standard of evaluation. Summary judgments are not common in civil proceedings of all jurisdictions, It is puzzling to adopt such an American-center approach. In addition, evaluation standards  involve not only procedures but substances. Does Citation of Rule 56 of U.S. Fed. Rule of Civil Procedure mean that the Examiners of a service provider will only make decisions procedurally?

Previously, the standards were focusing on “clear-cut” cybersquatting cases, which are inherently and inevitably controversial but at least combine both procedural and substantive elements. I therefore suggest the “standards” be resumed to “clear-cut cases” subject to thoughtful definition.

In addition, I wonder the feasibility of applying Rule 56 of U.S. Fed. Rule of Civil Procedure. The prerequisite of summary judgment proceeding is that there is “no genuine issue for trial” so that the court may quickly move to judgment based on both parties’ submissions (even without supporting affidavits). However, there will be several issues or material facts that need to be verified in URS. Most obviously, how would the examiner assess the elements of complaints (domain name is identical or confusingly similar to a mark in which Complainant holds a valid registration issued by a jursidction that conducts a substantive examination of trademark applications prior to registration and The Registrant has no legitimate right or interest to the domain name; and/or the the domain was registered and is being used in bad faith) in a contested case?

c) Appeal

I don’t understand the complicated appeal system. In previous version, a URS decision can be appealed externally to an Ombudsman or a court. Now is there appealing system available internally? Will it be maintained by the same service provider?

After a decision in any case (default or contested), either party has a right to seek a denovo appeal within the URS process for a reasonable fee to cover the costs of the appeal.

Since we have only limited time to respond, I tried to write down all I thought about for further modifications and criticisms.

Prof. Xue chaired the Internet Governance Workshop at APNIC 28 in Beijing. Markus Kummar, Philip Smith, Xiaodong Lee and other speakers made the presentation to hundreds of participants to APNIC meeting. Prof. Xue’s moderation of the panel and the audience’s questions were highly praised by all the participants.

If you have ever used the Internet, you are a stakeholder in Internet governance. Come to these sessions to:

• Hear the key Internet governance issues in the Asia Pacific and around the world
• Hear more about growing interest in Internet addressing issues from bodies such as the Internet Governance Forum, OECD, and the International Telecommunications Union
• Share your opinions
• Learn how you can be involved in shaping the future of the Internet

Three critical reasons against the string comparison as proposed by the IRT
a) It subverts the bottom-up consensus of the new gTLD process.
String confusion issue was firstly researched by the GNSO IDN WG, which eventually stated that string confusion should be limited to visual similiarity. This is confirmed by the GNSO document to the Board. Although the gTLD guidebook is ambiguous on string confusion, which only says that any string should not inflict “user confusion”, the IRT proposal should not betray the community consensus by stretching it to “meaningful” confusion.
b) It is legally baseless.
No international law allows for trademark protection in translated form except for well-known marks. The string confusion extending to commerical impression (meaningful similarity) is equivalent to create additional protection indiscrimatively for all the marks, which is not acceptedly internationally.
c) It breaches free speech.
No trademark owner owns the meaning of a trademark, let alone the meaning in any script or language. A cross-script monopoly for words or “meaning” of a trademark is obvously not the intent of the new gTLD program.

Unreasonableness of IP Clearing House

It is a sham for uniform mandatory sunrise imposed on indiscriminately on all the potential new gTLD operators. This mandatory uniform sunrise approach can easily be gamed. Look at the thousands of trademarks registered in preparation for the new gTLDs. I can see hundreds of “.music” trademarks in various territories that can be searched and verified, not Tunisian registrations, but why should they be prioritized? I really want to know if such “clearing” covers the translation of a federally registered trademark or limited to the original mark string per se. If it were the first case, it would almost become a death sentence to IDNs (thinking about the trademark flooding to game the clearing house!).