The True Historie of Trademark+50 and the Deathe of the GNSO (Parte the Thirde)
ICANN’s decision to press ahead with the “Trademark+50” trademark protection mechanism over the objections of much of the community may not be the end of the controversy.
Some in the Generic Names Supporting Organization are even complaining that ICANN’s rejection of a recent challenge to the proposal may “fundamentally alter the multi-stakeholder model”.
Trademark+50 is the recently devised adjunct to the suite of rights protection mechanisms created specially for the new gTLD program.
It will enable trademark owners to add up to 50 strings to each record they have in the Trademark Clearinghouse, where those strings have been previously ruled abusive under UDRP.
Once in the TMCH, they will generate Trademark Claims notices for both the trademark owner and the would-be registrant of the matching domain name during the first 60 days of general availability in each new gTLD.
Guinness, for example, will be able to add “guinness-sucks” to its TMCH record for “Guinness” because it has previously won guinness-sucks.com in a UDRP decision.
If somebody then tries to register guinness-sucks.beer, they’ll get a warning that they may be about to infringe Guinness’ trademark rights. If they go ahead and register anyway, Guinness will also get an alert.
Trademark+50 was created jointly by ICANN’s Business Constituency and Intellectual Property Constituency late last year as one of a raft of measures designed to strengthen rights protection in new gTLDs.
They then managed to persuade CEO Fadi Chehade, who was at the time still pretty new and didn’t fully appreciate the history of conflict over these issues, to convene a series of invitation-only meetings in Brussels and Los Angeles to try to get other community members to agree to the proposals.
These meetings came up with the “strawman solution”, a list of proposed changes to the program’s rights protection mechanisms.
Until two weeks ago, when DI managed to get ICANN to publish a transcript and audio recording of the LA meetings, what was said during these meetings was shrouded in a certain degree of secrecy.
I don’t know why. Having listened to the 20-hour recording, I can tell you there was very little said that you wouldn’t hear during a regular on-the-record public ICANN meeting.
Everyone appeared to act in good faith, bringing new ideas and suggestions to the table in an attempt to find a solution that was acceptable to all.
The strongest resistance to the strawman came, in my view, from the very small number (only one remained by the end) of non-commercial interests who had been invited, and from the registrars.
The non-coms were worried about the “chilling effect” of expanding trademark rights, while registrars were worried that they would end up carrying the cost of supporting confused or frightened registrants.
What did emerge during the LA meeting was quite a heated discussion about whether the IPC/BC proposals should be considered merely “implementation” details or the creation of new “policy”.
That debate spilled over into 2013.
Under the very strictest definition of “policy”, it could be argued that pretty much every aspect of every new rights protection mechanism in the Applicant Guidebook is “implementation”.
The only hard policy the GNSO came up with on trademarks in new gTLDs was back in 2008. It reads:
Strings must not infringe the existing legal rights of others that are recognized or enforceable under generally accepted and internationally recognized principles of law.
Pretty much everything that has come since has been cobbled together from community discussions, ad hoc working groups, ICANN staff “synthesis” of public comments, and board action.
But many in the ICANN community — mainly registries, registrars and non-commercial interests — say that anything that appears to create new rights and/or imposes significant new burdens on the industry should be considered “policy”.
During the LA meetings, there was broad agreement that stuff like extending Trademark Claims from 60 to 90 days and instituting a mandatory 30-day notice period before each Sunrise period was “implementation”.
Those changes won’t really incur any major new costs for the industry; they merely tweak systems that already have broad, if sometimes grudging, community support.
But the attendees were split (IPC/BC on the one side, most everyone else on the other) about whether Trademark+50, among other items, was new policy or just an implementation detail.
If something is “policy” there are community processes to deal with it. If it’s implementation it can be turned over to ICANN staff and forgotten.
Because the registries and registrars have an effective veto on GNSO policy-making and tend to vote as a bloc, many others view a “policy” label as a death sentence for something they want done.
A month after the strawman meetings, in early December, ICANN staff produced a briefing paper on the strawman solution (pdf) for public comment. Describing what we’re now calling Trademark+50, the paper stated quite unambiguously (it seemed at the time):
The inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter.
Chehade had previously — before the strawman meetings — strongly suggested in a letter to members of the US Congress that Trademark+50 was not doable:
It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights.
Personally, I doubt then-new Chehade wrote the letter (at least, not without help). It mirrors Beckstrom-era arguments and language and contrasts with a lot of what he’s said since.
But it’s a pretty clear statement from ICANN’s CEO that the expansion of Trademark Claims to Trademark+50 night expand trademark rights and, implicitly, is not some throwaway implementation detail.
Nevertheless, a day after the staff briefing paper Chehade wrote to GNSO Council chair Jonathan Robinson in early December to ask for “policy guidance” on the proposal.
Again, there was a strong suggestion that ICANN was viewing Trademark+50 as a policy issue that would probably require GNSO input.
Robinson replied at the end of February, after some very difficult GNSO Council discussions, saying “the majority of the council feels that is proposal is best addressed as a policy concern”.
The IPC disagreed with this majority view, no doubt afraid that a “policy” tag would lead to Trademark+50 being gutted by the other GNSO constituencies over the space of months or years.
But despite ICANN staff, most of the GNSO Council and apparently Chehade himself concluding that Trademark+50 was policy, staff did a U-turn in March and decided to go ahead with Trademark+50 after all.
An unsigned March 20 staff report states:
Having reviewed and balanced all feedback, this proposal appears to be a reasonable add-on to an existing service, rather than a proposed new service.
…
It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.
This caught the GNSO off-guard; Trademark+50 had looked like it was going down the policy track and all of a sudden it was a pressing reality of implementation.
Outraged, the Non-Commercial Stakeholders Group, which had been the strongest (if smallest through no fault of their own) voice against the proposal during the strawman meetings filed a formal Reconsideration Request (pdf) with ICANN.
Reconsideration Requests are one of the oversight mechanisms built into ICANN’s bylaws. They’re adjudicated by ICANN’s own Board Governance Committee and never succeed.
In its request, the NCSG told a pretty similar history to the one I’ve just finished relating and asked the BGC to overturn the staff decision to treat Trademark+50 as implementation.
The NCSG notes, rightly, that just because a domain has been lost at UDRP the string itself is not necessarily inherently abusive. To win a UDRP a complainant must also demonstrate the registrant’s bad faith and lack of rights to the string at issue.
To return to the earlier example, when notorious cybersquatter John Zuccarini — an unambiguously bad guy — registered guinness-sucks.com back in 2000 he told Guinness he’d done it just to piss them off.
That doesn’t mean guinness-sucks.beer is inherently bad, however. In many jurisdictions I would be well within my rights to register the domain to host a site criticizing the filthy brown muck.
But if I try to register the name, I’m going to get a Trademark Claims notice asking me to verify that I’m not going to infringe Guinness’ legal rights and advising me to consult a lawyer.
Chilling effect? Maybe. My own view is that many people will just click through the notice as easily as they click through the Ts&Cs on any other web site or piece of software.
Either way, I won’t be able to claim in court that I’d never heard of GuinnessTM, should the company ever decide to sue me.
Anyway, the NCSG’s Reconsideration Request failed. On May 16 the BGC issued a 15-page determination (pdf) denying it.
It’s this document that’s causing consternation and death-of-the-GNSO mutterings right now.
Last week, Neustar’s lead ICANN wonk Jeff Neuman asked for the Reconsideration Request to be put on the agenda of the GNSO Council’s June 13 meeting. He wants BGC representatives to join the call too. He wrote:
This decision was clearly written by legal counsel (and probably from outside legal counsel). It was written as a legal brief in litigation would be written, and if upheld, can undermine the entire bottom-up multi-stakeholder model. If ICANN wanted to justify their decision to protect their proclamation for the 50 variations, they could have done it in a number of ways that would have been more palatable. Instead, they used this Reconsideration Process as a way to fundamentally alter the multi-stakeholder model. It not only demonstrates how meaningless the Reconsideration process is as an accountability measure, but also sends a signal of things to come if we do not step in.
He has support from other councilors.
I suspect the registries that Neuman represents on the Council are not so much concerned with Trademark+50 itself, more with the way ICANN has forced the issue through over their objections.
The registries, remember, are already nervous as hell about the possibility of ICANN taking unilateral action to amend their contracts in future, and bad decision-making practices now may set bad precedents.
But Neuman has a point about the legalistic way in which the Reconsideration Request was handled. I spotted a fair few examples in the decision of what can only be described as, frankly, lawyer bullshit.
For example, the NCSG used Chehade’s letter to Congress as an example of why Trademark+50 should be and was being considered “policy”, but the BGC deliberately misses the point in its response, stating:
The NCSG fails to explain, however, is how ICANN policy can be created through a proclamation in a letter to Congress without following ICANN policy development procedures. To be clear, ICANN cannot create policy in this fashion.
Only a lawyer could come up with this kind of pedantic misinterpretation.
The NCSG wasn’t arguing that Chehade’s letter to Congress created a new policy, it was arguing that he was explaining an existing policy. It was attempting to say “Hey, even Fadi thought this was policy.”
Strike two: the NCSG had also pointed to the aforementioned staff determination, since reversed, that Trademark+50 was a policy matter, but the BCG’s response was, again, legalistic.
It noted that staff only said Trademark+50 “can” be considered a policy matter (rather than “is”, one assumes), again ignoring the full context of the document.
In context, both the Chehade letter and the March staff document make specific reference to the fact that the Implementation Recommendation Team had decided back in 2009 that only strings that exactly match trademarks should be protected. But the BGC does not mention the IRT once in its decision.
Strike three: the BGC response discounted Chehade’s request for GNSO “policy guidance” as an “inartful phrase”. He wasn’t really saying it was a policy matter, apparently. No.
Taken as a whole, the BGC rejection of the Reconsideration Request comes across like it was written by somebody trying to justify a fait accompli, trying to make the rationale fit the decision.
In my view, Trademark+50 is quite a sensible compromise proposal with little serious downside.
I think it will help trademark owners lower their enforcement costs and the impact on registrars, registries and registrants’ rights is likely to be minimal.
But the way it’s being levered through ICANN — unnecessarily secretive discussions followed by badly explained U-turns — looks dishonest.
It doesn’t come across like ICANN is playing fair, no matter how noble its intentions.
Excellently written article and a good summary of why many in the GNSO council are upset with this decision. Leaving the subject matter of the 50+ aside, the way this determination was made despite all that has gone before shows a deeply rooted problem within ICANN.
Either you have a multi-stakeholder policy making body, or you decide everything within ICANN staff and have it rubber stamped by the board. You cannot have both. And if the policy making body comes out and states it assumes some issue to be policy, then it should be handled as a policy issue, especially if this view is supported at various times from other sources, as you pointed out. ICANN overriding prior determinations as well as its main policy making body shows contempt for the multi-stakeholder model and indicates a direction that many on the GNSO council and within the community do not want ICANN to take. For if ICANN abandons the multi-stakeholder model and becomes a pure top-down accreditation body, what justifies this model?
In recent history, there have been too many issues where ICANN has abandoned community consensus and unilaterally moved ahead with what staff or the board thinks is best or adopting policies that have been publicly rejected by the community. It is therefore high time to put this topic on the agenda to maintain ICANN as a true multi-stakeholder organization.
Volker Greimann
GNSO Councillor
Good summary of a flawed and labyrinthine process — but can’t agree that TM+50 is “quite a sensible compromise”. It takes two sides to compromise, but one side got run over in this make-the-rules-up-on-the-fly process.
And it’s not TM+50, it’s TM+thousands when you add up all the jurisdictions large TM holders are registered in.
Finally, there is no guidance as to whether receipt of the warning and decision to proceed with registration anyway will be regarded as evidence of bad faith registration in any subsequent UDRP or URS. Will the potential registrant be notified as to whether the warning was generated by an exact TM or by a UDRP or court decision on a variation of the TM? If a court decision, what jurisdiction? And if a UDRP, 1 or 3 member panel, and was it appealed, and what was result? Will ICANN be implementing some answers on all of that?
Finally, don’t agree that most potential registrants will continue despite warning — I think a sizeable proportion will be spooked and abandon it, even when the name they are seeking may have zero infringement potential depending on its intended use and the gTLD it is sought at. Unsophisticated registrants will not risk TM infringement, or hire a lawyer to analyze their risk in proceeding.
Another albeit minor twist in the saga was my Ombudsman complaint about the secret, invitation-only meetings that developed the IPC/BC proposal was accepted by Fadi as being correct. He declared that – very graciously, I might add – to a meeting of the non-contracted parties house in L.A. in January, and said steps were being taken to prevent such a flawed process happening again.
If someone has a TM on a reserved name then the moment it gets delegated via auction or whatever way, a Claim Notice will be sent to the company who gets the domain and to the company who has a TM on it.
I can see that scaring potential users.
In addition it opens up Icann and the Registries to lawsuits by all sides. If indeed the TM holder has rights then the name should not be reserved and vice versa. If its allowed to be reserved then no Notice should be sent. Cant have it both ways….
This is important in order to avoid gaming the system putting in TM’s on generics..ie on names that the registry want to use in order to promote their extension.
Companies who will get these names from a reserved list by auction etc.. are not aware that very soon after they will be open to UDRP etc.. Yes this might happen in any event, but by sending a Claim Notice to the TM holder after these reserved names are delegated is asking for trouble from everyone. ICANN in effect is waving a red sheet in front of them and saying: “ Hey we just gave the name you have a TM on to someone else. You TM holder don’t have enough rights to get it at Sunrise period but now you can go after the company that just bought it from us. To the buyer of the name or company it is given to, you are saying; hey we are not looking or your best interest, but looking to make money of o you, and now its your problem…