Institute for Internet Policy & Law @ Beijing Normal University

(Hong Xue, Chinese Domain Name Users Alliance)

Unlike the Clearing House and URS that have been subject to hard-thought community review and improvement, the present PDDRP proposal is basically intact since the IRT report. With respect to this very complicated and special trademark protection mechanism that may be applicable to both top and second level, substantive works are still badly needed to be done. The present judgment criteria are highly subjective and in a large part subject to the discretion of the expert panel. Furthermore, application of the procedure at the second level imputes an indirect liability on Registry. This may have serious chilling effect to drive the registry to monitor and supervise not only the domain name strings but the content of the websites that the domain names are used to prove their innocence. As a result, this will impose new restriction on registrants.

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.

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!).

Drafted by Dr. Hong Xue on behalf of CDNUA, At-Large@China and ISOC-Australia
This document is consistent with the statements and advices made by the ALAC and At-Large Community to the ICANN Board and that it is reflective of the views of many ALSes within the Asia Pacific Region and that it is expected to gain support of the APRALO as a formal Statement at our next meeting on the 28th of July. We also get the support from the other organizations/ key stakeholders in this Region.
A majority of Asians are non-ASCII users. The implementation of IDN TLDs is essentially important in Asia. However, we have concern that the IRT proposals, particularly the additional “meaning” (commercial impression) criterion, would negatively impact the IDN TLD applicants. Since this criterion has never been applied to the existing ASCII TLDs- for instance .biz was not precluded for being “meaningfully or semantically similar” to .com, ICANN should not impose the double standards to the IDN TLDs merely for the protection of interests of one stakeholder group. We strongly affirm that evaluation of string confusion must be restricted to visual similarity, and not be inappropriately enhanced to include “aural or meaning (“commercial impression”)”, which is very subjective and would open the door to endless disputes.
With respect to GPM, we concern the proposal that “the confusing similarity analysis of applied-for gTLD strings against GPMs include the aural and commercial impression (meaning) of the applied-for string in addition to the visual similarity” would unreasonably prejudice the IDN TLD applicants. Legal protection of a trademark in translation or transliteration must be subject to the complicated legal analysis and judgment based on special law in the respective territory. ICANN has neither the authority nor capacity to do this in the Initial Evaluation process. If taken into account those famous marks that consist of generic terms, the IRT proposal would seem absurd. Why should a trademark such as “BOSS”, “DOVE” or “VOGUE” bar the Chinese-character TLDs like “.老板”、“.鸽子”or “.时尚”?
In contrast to the trademarks that have been singled out as an overarching issue for new gTLD implementation, we concern that the other legal issues that are protected by the international treaties, such as non-trademark “traditional knowledge”, would be unreasonably ignored or push aside.
We reiterate the concerns that have been expressed in various circumstances by the at-large communities that ICANN should not engage in any trademark protection regime which extends beyond existing international intellectual property treaties and the inherent legal limitations on the trademark rights.

http://forum.icann.org/lists/irt-final-report/msg00138.html

Date: Mon, 6 Jul 2009 11:35:47 +0800

We strongly concern the IP Clearinghouse and Globally Protected Marks List. Trademarks have always been protected and enforced by national law, which is not changed by any relevant international conventions, particularly Paris Convention or WTO TRIPS Agreement, let alone that not every country or territory is the members of these conventions. ICANN, in its limited technical coordination role as declared in its mission, has absolutely no authority to create any international or even global law to change the territorial nature of trademark rights. What is recommended by IRT is to set up a private ordering through ICANN DNS governance to create a de facto global enforcement for trademarks, irrespective of legal limits of trademark protection. We do believe if ICANN go ahead with this line, it will be an obvious mission creep of ICANN.

We assume that URS would become an unnecessary additional layer of UDRP. Another concern over URS is that its rapidness, which will inevitably deprive a TLD string without even full trial of the whole facts. This approach was even abandoned when drafting UDRP.