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Guest post: Pritz on policy vs implementation and the brother-in-law test

Kurt Pritz, July 11, 2013, Domain Policy

A current, important debate in internet governance and operation of the multi-stakeholder model asks: when do the bottom-up policy-making volunteers let go and when do the staff policy implementers take over?

Drawing that line to the satisfaction of everyone seems impossible. That is because there is no bright line — the development and implementation of policy is a task requiring the constant attention and cooperation of policy makers and implementation teams.

Is an ICANN action a policy position? Or is it a mere implementation detail? Labels almost never work, especially one-word labels. Since when are ICANN issues black or white?

We’ve stopped discussing the issues, it is easier to discuss the labels: is it “policy” or “implementation”?

The multi-stakeholder model depends on communication, consideration and collaboration

ICANN has a rich history of its stakeholders butting heads with the Board and both butting heads with the staff: long lines at microphones, speaking in hyperbole, and wringing of hands that the multi-stakeholder model has failed. ICANN also has a rich history of staff-stakeholder collaboration in the formulation of policy and in the implementation of policy.

The initial Inter-Registrar Transfer Policy was little more than a framework. Then a team of ICANN staff and TLD registry operators met over a period of months and developed the implementation model. It really didn’t matter where the policy making ended and the implementation started. There was a resolve that there should be an easy-to-follow way for registrants to transfer names and there was teamwork to get that accomplished.

There are parallels in the “real” world. In 1990, the United States enacted the American with Disabilities Act (ADA). The ADA itself was little more than a framework also: American employers should make “reasonable accommodation” for those with a “disability.” What was a reasonable accommodation? And what qualified as a disability?

Over a period of many years, those questions have been answered through a series of many court cases and regulations. But in 1990 employers were trying to figure that out.

At the time, we worked on developing clear criteria that would let our employees know what was covered by the ADA. After failing at that, we developed an approach to treat employees as you would your brother-in-law. You are deferential to your brother-in-law (because you have to face your sister) but not totally deferential (after all, he is making love to her). You just treat him better than the letter of the law requires.

So when your employee comes up to you and asks for better lighting at his workstation, you don’t try to parse whether you are required to accommodate near-sighted employees. You say, this is my brother-in-law, and I will listen to his request and carefully consider it.

This is how a public participation model works. The stakeholders are not strangers to one another and the model only works if there is mutual trust and respect.

If someone says, “I want to be heard,” she is generally listened to. (That doesn’t mean discussion is never ending. If that same person wants to be heard again, and says the same thing without change, she will be disregarded. If she continually repeats the same demand and content, she will be shunned.)

Policy versus Implementation should be Policy and Implementation

Take the example currently debated. There is a new gTLD policy element (approved in 2009) that states:

Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.

How does one implement that? The implementation of trademark rights protection mechanisms were developed after years of community/staff consultation, “implementability” studies, draft positions, memoranda describing potential solutions and the reasoning behind them, debate, and discussion.

When things were apparently settled, new parties joined the ICANN discussion — they were welcomed as were their opinions. ICANN was richer because there were new participants in the model. New implementation models were written. Finally, there was an indication the discussion was spent. The work was “said and done.”

Then, apparently, not all was said-and-done. After the gTLD program was launched, there were new suggestions and participants. ICANN decided to entertain those ideas. After a round of community feedback, a subset of the new suggestions was recommended by ICANN for inclusion into the implementation plan for new gTLDs.

ICANN’s policy makers, the GNSO, weighed in, agreeing with many of the conclusions but picking one of the recommendations and saying, “we’d like to talk a bit more about this one because we don’t fully understand its implications and effects.” (Unfortunately, the GNSO didn’t say exactly that, it sounded more to me like, “this item is policy and therefore it cannot be implemented without our consensus opinion.”)

Now, if my brother-in-law says he wants to talk about something some more, even if he doesn’t give a good reason, I am ready to indulge him. But ICANN did not indulge the GNSO. Now, we are in a policy versus implementation discussion: what work is the province of policy makers, and the province of implementers? The GNSO is considering ICANN Bylaw changes to ensure they are heeded.

Bylaw changes are not the lynchpin to multi-stakeholder model success. Putting rules in place for how and when to listen never work. There will always be exceptions. (Another whole piece can be written on how the rules governing communications between ICANN and its Governmental Advisory Committee have failed to facilitate the success of the multi-stakeholder model.)

Processes and procedures (as they are currently described in the Bylaws) are important. We must have clear rules for creation of consensus policy, with timelines and borders to ensure that issues are addressed and rights are respected.

But the operation of the multi-stakeholder model is more complicated than following those processes. The success of the model depends on the mutual trust and respect of the participants, and the ability to actively listen and to understand what is meant, even if that is not exactly what is said.

Rather than create new rules or discuss how one side can prevent the other from abusing its position, the volunteers, staff and Board should look inwardly to improve its own listening and communicating.

You’re my brother-in-law. I am ready (more than ready) to disagree with you, but first I am going to listen to what you have to say.

This is a guest post written by Kurt Pritz, ICANN’s former chief strategy officer. He is currently an independent consultant working with new gTLD applicants and others.

Donuts beats dot-brand in fight over .express gTLD

Kevin Murphy, July 11, 2013, Domain Policy

Donuts has prevailed in the first big dust-up between a portfolio gTLD applicant and a dot-brand hopeful.

The World Intellectual Property Organization today published its decision (pdf) in the Legal Rights Objection filed by a clothing retailer called Express over the .express gTLD.

The ruling could have a big impact on future rounds of the new gTLD program, possibly giving rise to an influx of defensive, generic-word dot-brand applications.

Both Express and Donuts have applied for .express. They’re the only two applicants for the string.

Express runs about 600 stores in the US and elsewhere and has had a trademark on its name since 1979. Donuts, as with all of its 307 original applications, wants to run .express as an open gTLD.

Express argued in its LRO that a Donuts-run .express would severely damage its brand, saying:

Should applicants for new TLDs be able to operate unrestricted TLDs represented by generic words which are also extremely well known brands, billions of dollars of goodwill will be wiped out in a TLD heartbeat.

Donuts, in its response, pointed out that there are thousands of uses of the word “express” in trademarks and other contexts, and even produced a survey that it said showed only 8% of fashionistas even associate the word with the brand.

The WIPO panelist, after what appears to have been something of a crisis moment of wondering what the hell ICANN was thinking when it designed the LRO, sided with Donuts. He said:

The Panel ultimately decides that the trademark owner (Complainant) should not be able to prevent adoption by the applicant (Respondent) of the applied-for gTLD <.express> in the particular context presented here. While Complainant certainly owns rights in the EXPRESS trademark for use in connection with apparel and fashion accessories, and while that trademark is reasonably well known among a relevant segment of consumers in the United States, there are so many common usages of the term “express” that it is not reasonable to foreclose its use by Respondent as a gTLD.

He follows up with a few sentences that should give owners of dictionary-word trademarks reason to be worried.

The Panel recognizes that, should Respondent successfully secure the gTLD, Complainant may be required to address potential Internet user confusion in the commercial marketplace for its products based on the registration (or attempted registration) of certain second level domains. However, Complainant faces this risk because it adopted a common word in the English language for its trademark. Moreover, Complainant has applied for the identical <.express> string as a gTLD in competition with Respondent. Ultimately, the parties may well end up in an auction contest for the gTLD. This is not Complainant’s last chance to secure its trademark as a gTLD.

In other words, Express can either pay ICANN or Donuts a bunch of cash at auction to get its dot-brand, or it can let Donuts win and spend a bunch of cash on defensive registrations and UDRP/URS complaints. Not a great result for Express either way.

The panelist takes 10 pages of his 26-page decision to explain his deliberations, but it basically boils down to this: Express’ trademark is too generic to give the company exclusivity over the word.

It’s hard to disagree with his reasoning.

If subsequent LROs go the same way, and I suspect they will, then it will quickly become clear that the only way to guarantee nobody else gets your dictionary-word brand as a gTLD will be to apply for it yourself and fight it all the way to auction.

Governments kill off Patagonia’s dot-brand bid

Kevin Murphy, July 11, 2013, Domain Policy

The clothing retailer Patagonia has withdrawn its application for .patagonia after it became clear that ICANN’s Governmental Advisory Committee was unlikely to allow it.

Controversial from the outset, Patagonia’s dot-brand came under fire from governments including Argentina and Chile because the company is named after a large region of Latin America.

The GAC couldn’t find a consensus for a full-on objection to the bid, however, because the US government refused to agree that governments should have rights over such geographic terms.

However the US said last week that it would stand neutral on .patagonia and other geographic-flavored applications at next week’s ICANN meeting in Durban, smoothing the path to GAC consensus.

A GAC consensus objection would have spelled certain death to the application.

Amazon’s .amazon application is in exactly the same position as .patagonia was. Unless the company can come to some kind of arrangement with Brazil and over governments it may suffer the same fate.

First three new gTLD objections thrown out

Kevin Murphy, July 9, 2013, Domain Policy

Three objections against new gTLD applications have been thrown out by the World Intellectual Property Organization, two of them on the basis that they were blatant attempts to game the system.

The objections were all Legal Rights Objections. Essentially, they’re attempts by the objectors to show that for ICANN to approve the gTLD would infringe their existing trademark rights.

The applications being objected to were Google’s .home, SC Johnson’s .rightathome and Vipspace Enterprises .vip.

The decisions are of course completely unprecedented. No LROs have ever been decided before.

Let’s look at each in turn.

Google’s .home

The objector here was Defender Security Company, a home security company, which has also applied for .home and has objected to nine of its competitors for the string.

Basically, the objection was thrown out (pdf) because it was a transparent attempt to game the trademark system in order to secure a potentially lucrative gTLD.

Defender appears to have bought the application, along with associated companies, domains, social media accounts and trademarks, from CGR E-Commerce, a company owned by .music applicant Constantine Roussos.

The panelist in the case apparently doesn’t have a DomainTools subscription and couldn’t make the Roussos link from historical Whois records, but it’s plain to see for those who do.

The case was brought on the basis of a European Community trademark on the term “.home”, applied for in December 2011, just a few weeks before ICANN opened the new gTLD application window, and a US trademark on “true.home” applied for a few months later.

The objector also owned dothome.net, one of many throwaway Go Daddy domain name resellers Roussos set up in late 2011 in order to assert prior rights to TLDs he planned to apply for.

The panelist saw through all the nonsense and rejected the objection due to lack of standing.

Here’s the money quote:

The attempted acquisition of trademark rights appears to have been undertaken to create a basis for filing the Objection, or defending an application. There appears to have been no attempt to acquire rights in or use any marks until after the New gTLD Program had been announced, specifically two weeks before the period to file applications for new gTLDs was to open.

For the EC trademark, lack of standing was found because Defender didn’t present any evidence that it actually owned the company, DotHome Ltd, that owned the trademark.

For the US trademark, which is still not registered, the panelist seems to have relied upon UDRP precedent covering rights in unregistered trademarks in his decision to find lack of standing.

The panelist also briefly addresses the Applicant Guidebook criteria for LROs, although it appears he was not obliged to, and found Defender’s arguments lacking.

In summary, it’s a sane decision that appears to show that you can’t secure a gTLD with subterfuge and bogosity.

It’s not looking good for the other eight objections Defender has filed.

Vipspace Enterprises’ .vip

This is another competitive objection, filed by one .vip applicant against another.

The objector in this case is German outfit I-Registry, which has applied for four gTLDs. The respondent is Vipspace, which has only applied for .vip.

In this case, both companies have applied for trademarks, one filed one month before the other.

The panelist’s decision focuses, sanely again, on the generic nature of the string in question.

Because both trademarks were filed for the word “VIP” meaning “Very Important Person”, which is the intended meaning of both applications, it’s hard to see how either is a proper brand.

The panelist wrote (pdf):

while SOAP, for example, may be a perfectly satisfactory trade mark for cars, it cannot serve as a trade mark for the cleaning product “soap”.

While the parties have used the term, “VIP”, in various forms on their website to indicate the manner in which the term will be used if they are successful in being awarded the domain, there is nothing before the Panel (beyond mere assertion) to show that either of them has yet traded under their marks sufficiently to displace the primary descriptive meaning of the term and establish a brand or at all.

In other words, it’s a second case of a WIPO panelist deciding that getting, or applying for, a trademark is not enough to grant a company exclusive rights to a new gTLD string.

Sanity, again, prevails.

SC Johnson’s .rightathome

While it contains the word “home”, this is a completely unrelated case with a different objector and a different panelist.

The objector here was Right At Home, a Nebraska-based international provider of in-home elderly care services. The applicant is a subsidiary of the well-known cosmetics company SC Johnson, which uses “Right@Home” as a brand.

It appears that both objector and applicant have really good rights to the string in question, which makes the panelist’s decision all the more interesting.

The way the LRO is described in ICANN’s new gTLD Applicant Guidebook, there are eight criteria that must be weighed by the panelist.

In this case, the panelist does not provide a conclusion showing how the weighting was done, but rather discusses each point in turn and decides whether the evidence favors the objector or the applicant.

The applicant here won on five out of the eight criteria.

The fact that the two companies offer different products and/or services, accompanied by the fact that the phrase “Right At Home” is in use by other companies in addition to the complainant and respondent appears to have been critical in tipping the balance.

In short, the panelist appears to have decided (pdf) that because SC Johnson did not apply for .rightathome in bad faith, and because it’s unlikely internet users will think the gTLD belongs to Right At Home, the objection should be rejected.

I am not a lawyer, but it appears that the key takeaway from this case is that owning a legitimately obtained brand is not enough to win an LRO if you’re an objector and the new gTLD applicant operates in a different vertical.

This will worry many people.

Amazon’s dot-brand likely doomed as US withdraws geo objection

Kevin Murphy, July 6, 2013, Domain Policy

The US government is set to allow the Governmental Advisory Committee to kill off Amazon’s application for .amazon, along with eight other new gTLDs with geographic flavors.

In a position paper published last night, the National Telecommunications and Information Administration said:

the United States is willing in Durban to abstain and remain neutral on .shenzen (IDN in Chinese), .persiangulf, .guangzhou (IDN in Chinese), .amazon (and IDNs in Japanese and Chinese), .patagonia, .yun, and .thai, thereby allowing the GAC to present consensus objections on these strings to the Board, if no other government objects.

According to a GAC source, US protests were the “only reason” the GAC was unable to reach a consensus objection to these applications during the Beijing meeting three months ago.

Consensus would strengthen the objection, giving the ICANN board the presumption that the applications, some of which have already passed Initial Evaluation, should not be approved.

None of the nine applications in question met ICANN’s strict definition of a “geographic” string, but they nevertheless look geographic enough to raise concerns with GAC members.

Amazon’s application for .amazon raised the eyebrows of the Latin American countries that share the Amazonia region.

The company has been in talks with these GAC members since Beijing. If it wants to secure .amazon, it has a little over a week to address their concerns, if it wants to avoid an objection.

While the US is now promising to drop its objection to the GAC’s objection, it does not appear to have changed its position, claiming that governments have no rights to geographic strings. NTIA said:

The United States affirms our support for the free flow of information and freedom of expression and does not view sovereignty as a valid basis for objecting to the use of terms, and we have concerns about the effect of such claims on the integrity of the process.

the United States is not aware of an international consensus that recognizes inherent governmental rights in geographic terms.

It’s calling for a rethink of the process, during the mandatory review of the new gTLD program that ICANN must conduct before accepting a second round of applications.

Given that the GAC currently has the ability to object to any string for any reason, it’s difficult to see how a review could achieve the NTIA’s goal without reining in the GAC’s powers.