COMMENTS FROM ICANN’S NON-COMMERCIAL USERS CONSTITUENCY (NCUC)

The GNSO New TLD Committee’s Draft Final Report On The Introduction Of New Generic Top Level Domains

Overview

ICANN’s Non-Commercial Users’ Constituency (NCUC) appreciates this opportunity to comment on the GNSO Draft Recommendations for New GTLD Policy. While much progress has been made in recent weeks to resolve differences, much work remains before a consensus policy can be reached. The NCUC refers to its earlier constituency statements on the introduction of new gtlds, in particular, its statement of December 2006.[1]

Our overall concern remains that despite platitudes to certain, transparent and predictable criteria—the GNSO’s draft recommendations create arbitrary vetoes and excessive challenges to applications. There are some for incumbents; for trademark rights holders; for the easily offended, for repressive governments and worst of all, for “the public”. It’s a wolf in sheep’s clothing. A recipe for irregularity, discretion and uncertainty in the new domain name space.[2]

Among the more troubling proposals is the introduction of criteria in which strings must be ‘morally’ acceptable and not contrary to ‘public order’ (Recommendation #6). A concept borrowed from trademark law without precedent in the regulation of non-commercial speech.[3] NCUC opposes any string criteria related to ‘morality’ or ‘public order’ as beyond ICANN’s technical mandate.

Following recent discussions and revisions, the draft now refers[4], in passing, to ‘freedom of speech’ rights, but concerns remain that a restriction on certain expression in part of the world will be extended outside that nation, possibly even to the entire world, through ICANN policy. If the GNSO disagrees with NCUC and ultimately include string criteria on morality and public order in its final report, then the recommendations should make clear that ICANN policy on this matter will not be more restrictive than the national law in which an applicant operates.

NCUC remains particularly troubled with Recommendation #20 that would allow the showing of a “substantial opposition” to entirely reject an application. It swallows up any attempt to limit string criteria to technical, operational, and financial evaluations. Recommendation #20 violates internationally recognized freedom of expression guarantees and insures that no controversial string application will ever be granted.

NCUC continues to reject Recommendation 11 and an expanded role of ICANN staff and outside expert panels to evaluate string criteria that is not technical, financial, nor operational.

Recommendation 1.

This is a laudable Recommendation and we support it. We support the broad introduction of many new gTLDs.[5] We welcome the recognition that there are no technical constraints to introducing new gtlds and we hope to see consumer choice and demand served by a more robust approach in the future. ICANN’s role is not to second guess the market place and decide which ideas are likely to succeed, but rather, to facilitate the process for the consumer’s decision.

We refer to our concerns above as to the relationship between transparent, predictable criteria and vetoes over applications from unlimited sources.[6] By the many grounds for challenge introduced, criteria will be created and applied ex post facto by those responsible for determining challenges. We are also concerned that “normally” in this context be defined more precisely. These issues must be addressed if the objectives of this Recommendation are to be achieved. In particular, a public opposition period is in direct contraction with Recommendation 1 and Implementation Principle A: “New generic top-level domains (gTLDs) must be introduced in an orderly, timely and predictable way.”

Recommendation 2

It is beyond dispute that the DNS does not mirror trade mark regulation. Rather it grants plenary rights in words,[7] without any of the compromises in the requirements for recognition, the limits to infringement and the defenses.[8] This is best reflected in the serious issue in the DNS, whereby— all rights-holders now seek protection from dilutive use –when only truly famous marks are entitled to that protection in trade mark law.

The Recommendation is vague and thus a general veto for incumbents at the top level. We refer to Professor Christine Haight Farley’s legal briefing paper (Attachment A) as to the meaning of confusingly similar. [9] We also refer to Professor Jacqueline Lipton’s legal briefing paper (Attachment B) and its discussion regarding the limitations within trademark law on the rights of trademark holders to regulate speech.

The GNSO’s draft recommendations cherry pick from trade mark law to create a pastiche of ‘values’ –divorced from context and structure.[10] No account is taken of the legal requirement of use in commerce[11] –yet trade mark law requires this. What about fair use, comment, nominative use, criticism, parody and tribute? All protected at law. Under the US Anti-Cybersquatting Consumer Protection Act (ACPA) for example, unless inherently distinctive (i.e. made up words), marks comprised of descriptive (ordinary dictionary) words must acquire secondary meanings in order to become distinctive, otherwise famousness must be made out.[12] Even then there is the safe harbor for fair and lawful use of another’s trademark in a domain name.[13] These balancing requirements are not reflected in the Recommendation—although lip service is paid to them.[14] Defined criteria are absent and the promised balance and protection –a blank page open to numerous interpretations.

This Recommendation fails to adequately accommodate non-commercial speech and fair use of trademarks. Presumably what this all really means is that no “sucks” gTLDs (cyber-gripes) will ever be granted, nor indeed notdotcom, or anything that refers to or discusses an association with an existing trademark. Real competition often requires overlapping services that offer consumers choice.[15]

Recommendation 3.

This ground for challenge is for rights holders. The language is vague and overbroad— “existing legal rights of others.“[16]

There is no recognition that trade marks (and other legal rights) have legal limits[17]and — defenses.[18] This Recommendation should also state that such legal rights are subject to their legal limits under their own national law. Without this—only half of trade mark law is adopted—the claimed rights, but none of the defenses.

After recent discussion and forthcoming revisions, the draft now refers to ‘Freedom of Speech’.[19] We welcome the amendment to the Recommendation, although believe it should use the term “Freedom of Expression” since that is the term used in international treaties and agreements. We remain concerned however that general references to Conventions and Treaties must be translated into real protection for the right of the public to make use of their legal rights to language and free speech.

Bizarrely, the level of support for the rights-holder seems to be thought to be determining –rather than the validity or extent of his claimed rights and the existence of defences:      

“ii. An application may be rejected or deferred if it is determined, based on public comments or otherwise, that there is substantial opposition to it from significant established institutions of the economic sector, or cultural or language community, to which it is targeted or which it is intended to support. ICANN staff will develop criteria and procedures for making this determination, which may be based upon ICANN’s procedures which were used to examine the 2003 round of sponsored TLD applications.” 

What is provided for here is discretion.[20] This (now recommendation #20) cannot be meaningfully considered absent the criteria. We also oppose the “substantial opposition” formula –used again elsewhere. This is not predictable criteria and nor in this case is it of any relevance whatsoever to the nature and quality of the rights claimed and the existence of limits and defences. We refer to the objectives of Recommendation 1 and their contradiction with a public opposition period.

Recommendation 5

We oppose any attempts to create lists of reserved names. Even examples are to be avoided as they can only become prescriptive.

We are concerned that geographic names should not be fenced off from the commons of language and rather should be free for the use of all. This has been the traditional approach of trade mark law and remains the case in many nations.[21] Moreover the proposed recommendation does not make allowances for the duplication of geographic names outside the ccTLDs—where the real issues arise and the means of resolving competing concurrent use and fair and nominative use.

Recommendation 6

Again, we welcome the amendment to include recognition of rights to Freedom of Expression.[22] It is quite clear that this applies to single words and to strings, see Taubman v. Webfeats 319 F.3d 770 (6th Circuit 2003) ("The rooftops of our past have evolved into the Internet domain names of our present. We find that the domain name is a type of public expression, no different in scope than a billboard or a pulpit, and [defendant] has a First Amendment right to express his opinion about [plaintiff], as long as his speech is not commercially misleading, the Lanham Act cannot be summoned to prevent it).

We welcome the deletion of GAC Public Policy principle 2.1 from the GNSO’s recommendations. We objected in the strongest possible terms to the vague standard of “sensitivities,” which would subject all to the most restrictive views and had no place in the international legal order. GAC quoted selectively from the preamble to the 1948 Universal Declaration of Human Rights (UDHR) without reference to the enumerated specific right to Freedom of Expression in Article 19.[23] The UDHR Art. 29(2) provides the only permitted limits.[24] Similarly, the European Convention on Human Rights (ECHR) mandates Freedom of Expression should only be subject to limits prescribed by law[25] and necessary in a democratic society for one of the enumerated purposes, see Article 10[26] which also applies to commercial expression.[27] Strict scrutiny is applied to any attempt to limit the free expression of an idea.[28]

This Recommendation is borrowed from trade mark law[29] and the French concept of ‘ordre public.’[30] This is now subject to Article 10 ECHR[31] and Freedom of Expression and the modern standard is high.[32] While a few nations limit Free Expression by laws preventing hate speech, and incitement to violence, lowering the threshold to ‘sensitivities’ is tantamount to mandating political correctness,[33] forced hegemony, and is dangerous and to be resisted in every context. It does not matter how laudable the public policy objective, ICANN should remain content neutral.[34]

We oppose any string criteria based on morality and public order. The context is not exclusively commercial speech so trade mark law is not an analogy as registration of marks on government Registers involves an element of state sanction[35] that is not true of the DNS (though many seek it).[36] There is no consensus on the regulation of morality in non-commercial speech in international law. We refer to the quote from Taubman (above)—the TLDs are billboards. Democracies do not have laws requiring people to speak or behave morally. Some nations do have such rules – undemocratic theocracies mainly.

ICANN should stick to its technical remit, which it risks grossly exceeding here. It should defer to applicable national laws on matters of public order and morality. Applicants should comply with the content laws in the countries in which they operate.[37] The only real issue is, in any event, public order which is already served by nations’ own laws on obscenity, fighting words, hate speech and incitement.

Please be aware that criticism, satire, parody of others and their beliefs are a fundamental tenant of Freedom of Expression[38] which includes the right to offend. ICANN must ensure this in practice and mere references to Treaties and Conventions do not go far enough.

Recommendation 7

We record that this must be limited to transparent, predictable and minimum technical requirements only. These must be published. They must then be adhered to neutrally, fairly and without discrimination.

Recommendation 8

We support this recommendation to the extent that the criteria is truly limited to minimum financial and organizational operational capability. We remain concerned that in implementation of this recommendation, burdensome, expensive, and unnecessary criteria could be applied. All criteria must be transparent, predictable and minimum. They must be published. They must then be adhered to neutrally, fairly and without discrimination.

Recommendation 9

We strongly support this recommendation and again stress the need for all criteria to be limited to minimum operational, financial, and technical considerations. We also stress the need that all evaluation criteria be objective and measurable. We note that a ‘public opposition process’ as contemplated by Recommendation 20 and the use of ICANN staff and expert panels (Rec. #11) to evaluate any additional criteria will significantly detract from the goals of Recommendation 9.

Recommendation 11

The use of ICANN staff to evaluate applicant criteria should be limited to the function of determining whether objective operational, technical, and financial criteria are met only. ICANN staff should not be making evaluations about morality or other public policy objectives. We furthermore strongly oppose any use of “Expert” panels to adjudicate someone’s right to use a domain name. Neither ICANN staff nor expert panels can provide any level of public accountability or legitimacy to adjudicate fundamental rights. This will only invite insider lobbying and gaming. Getting this issue right in the policy gives meaning to the rest of the recommendations. Without objectivity, neutrality, impartiality and accountability here –all of the other Recommendations are meaningless platitudes. This function should be tendered out – just as the validation process in the Sunrise Rights Protection Mechanism has been in some cases. Arms length contractors should perform this task.

Recommendation 12

Our position in relation to Recommendation 11 applies mutandis mutandi. This should be tendered to qualified professionals, selected by rota, at arms-length who apply certain criteria.

Recommendation 20

As discussed above, we strongly oppose the ‘substantial opposition’ criteria for rejecting a domain. A public opposition period grants a veto on the creation of a domain for any vocal (or well-financed) minority, or for any competitor in the marketplace of ideas or services.

Recommendation #20 is totally incompatible with internationally recognized Freedom of Expression guarantees. Not even trade mark applicants must have everyone agree –they can still succeed in the face of an opposition. This Recommendation will insure that no controversial gtlds will exist and provides the means for killing the following types of applications for new gtlds:

-       The Catholic Church objects to the Church of England’s application for “.christian”;

-       China objects to an application of “.humanrights” in Chinese characters;

-       A competing bank applies for a “.bank”;

-       Competing factions within the same community each claim to be the rightful owner;

-       The Moral Majority objects to Planned Parenthood’s application for “.abortion”.

Recommendation 20 swallows up any attempt to narrow the string criteria to technical, operational and financial evaluations. It asks for objections based on entirely subjective and unknowable criteria and for unlimited reasons and by unlimited parties. ICANN should endeavor to keep the core neutral of these types of policy conflicts, both because they invite disaster for ICANN to become entwined in such issues, but also because such a policy is incompatible with freedom of expression rights. In short, Recommendation #20 is bad policy for the public and it is bad policy for ICANN.

 

ATTACHMENT A TO NCUC STATEMENT

 

LEGAL BRIEFING FROM LAW PROFESSOR CHRISTINE HAIGHT FARLEY

 

Professor of Law and Associate Dean for Faculty and Academic Affairs

American University Washington College of Law

RESPONSE TO THE DRAFT FINAL REPORT OF THE GNSO NEW GTLDS COMMITTEE ON THE INTRODUCTION OF NEW GENERIC TOP-LEVEL DOMAINS

June 6, 2007

Statement by Christine Haight Farley

Professor of law

American University Washington College of Law

 

            I want to begin by commending the GNSO New TLDs Committee on their policy recommendations and implementation guidelines for the introduction of new top-level domains. Through the Draft Final Report ICANN has explicitly stated its intention to make the GTLD application process open and transparent. The Draft Final Report has focused the issues and prompted a useful discussion. However, because I believe that the Draft Final Report includes a number of misstatements of domestic and international trademark law, I offer my legal analysis of these provisions.

            I will address my remarks only to Recommendations 2, 3 and 6 as these recommendations rely heavily on trademark law concepts.

            Before I make observations specific to these recommendations, I would like to offer some general remarks about the overall incongruence between trademarks and domain names. It is important to note at the outset this general lack of equivalence between trademark law and domain name policy. For instance, trademark law the world over is fundamentally based on the concept of territoriality. Thus trademark law seeks to protect regionally and market-based marks without implication for the protection or availability of that mark in another region. In contrast, domain names have global reach, are accessible everywhere and have implications for speech around the world.

Likewise, trademark protections hinge on what the relevant consumer thinks. Again, the law considers the viewpoints of consumers of a particular country, region or market, and acknowledges the variability of these viewpoints across regions. Domain names are not directed to a certain class or geographical region of consumers—they are accessible to all. Therefore in order to take account of consumers’ viewpoints, it would be necessary to consider a global public. The resulting one-size-fits-all approach would be anathema to trademark law in that it would leave consumers confused in one place while unjustifiably denying speech rights in another.

Finally, trademarks rights are not applied abstractly of in theory, but are always considered in context. Thus, in order to determine whether the use of a mark by another would likely cause confusion, it is necessary to analyze how mark is used in commerce. Consideration will be given to what goods or services it is applied to, what design or color scheme accompanies the use, what the level of consumer sophistication is, what marketing channels are used, etc. Generic top-level domains are necessarily abstract. We can not know in advance what the content of a website hosted at a certain address will be. It is therefore impossible to make fine-tuned conclusions about the appropriateness of certain domains. For these reasons, I strongly urge domain name policy makers to consider carefully the appropriateness of importing trademark law concepts into domain name policy.

Recommendation 2: “Strings must not be confusingly similar to an existing top-level domain.”

            In this recommendation, the Committee seems to be collapsing two distinctly different concepts: confusing similarity and likelihood of confusion. The Draft Final Report states that “’confusingly similar’ is used to mean that there is a likelihood of confusion.”[39] However, confusingly similar is a different legal standard than likelihood of confusion. The Committee appears to base this recommendation on Section 3.7.7.9 of the ICANN Registrar Accreditation Agreement, which it cites, implying that the legal standard is consistent. But that section of the ICANN Agreement explicitly employs the standard of infringement, which is likelihood of confusion.

            A determination about whether use of a mark by another is “confusingly similar” is simply a first step in the analysis of infringement. As the committee correctly notes, account will be taken of visual, phonetic and conceptual similarity. But this determination does not end the analysis. Delta Dental and Delta Airlines are confusingly similar, but are not likely to cause confusion, and therefore do not infringe. As U.S. trademark law clearly sets out, the standard for infringement is where thee use of a mark is such “as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive…”[40] While it may be that most cases of confusing similarity are likely to cause confusion, because the infringement standard takes account of how the mark is used, some cases of confusing similarity will not likely cause confusion.

            In trademark law, where there is confusing similarity and the mark is used on similar goods or services, a likelihood of confusion will usually be found. European trademark law recognizes this point perhaps more readily than U.S. trademark law. As a result, sometimes “confusingly similar” is used as shorthand for “likelihood of confusion.” However, these concepts must remain distinct in domain name policy where there is no opportunity to consider how the mark is being used. As applied to domain names, the only level of analysis is the first level of analysis: confusing similarity.

            A related problem with this recommendation is that it equates domain names with trademarks as legally protectable properties. They are not. Trademarks are legally protected intellectual property because it is believed that the commercial use of a mark by another that is likely to cause confusion would injure consumers. Trademarks are legally protectable intellectual property also because their owners have developed valuable goodwill in the marks. Neither of these conditions of legal protection apply in the case of domain names.

            Moreover, it is not clear what consumers would be confused about when encountering a string that is confusingly similar to an existing top-level domain. Because, unlike trademarks, strings are not inherently commercial communication means, it does not follow that consumers would incorrectly assume that the string would indicate source of origin. For example, http://nmhm.washingtondc.museum/ does not suggest to consumers a connection with www.museum.com.

            Beyond top-level domains, the Draft Final Report states that “strings should not be confusingly similar either to existing top-level domains like .com and .net or to existing trademark and famous names.”[41] The Draft Final Report notes that the Committee relied on “a wide variety of existing law” to reach this standard.[42] And yet, “famous names” is not a legal category under any trademark law. International trademark law grants rights to “well-known marks”[43] and to “trade names,”[44] and U.S. law grants rights to “famous marks,”[45] but “famous names” seems to be a construct created by the Committee. Clearly, the domain name policy should protect only recognized intellectual property.

Recommendation 3: “Strings must not infringe the existing legal rights of others that are recognized or enforced under generally accepted and internationally recognized principles of law.”

            There are simply too many legally recognized trademarks in the world to make this recommendation workable. The United States alone registers well over 100,000 trademarks each year[46] and there were 1,322,155 active certificates of registration last year. In the United States, state registered trademarks and common law trademarks are also legally recognized. Protected trademarks include generic terms, geographical terms, names, and fanciful words.

Recommendation 6: “Strings must not be contrary to generally accepted legal norms relating to morality and public order.”

            The Committee is correct that a variety of trademark legislation restrict registrations based on some notion of offense or immorality. Unfortunately, the Committee seeks to extend this trademark law concept to domain name policy. This extension is not a natural one and presents many problems in its application.

Where these content restrictions exist in trademark law they are understood as merely restricting the registration of trademarks, not the use of such trademarks. That is, under certain legislation a trademark may be deemed unregistrable but the trademark owner may still use the trademark in commerce and may even have the benefit of legal protection over the trademark. The only restriction is that the trademark owner is denied certain benefits of registration.

The United States has such a content restriction in its trademark law.[47] What saves this legislation from violating the First Amendment is that it is not a restriction on use; it is merely a restriction on certain legal benefits deriving from federal registration. Any restriction of the use of the trademark would need to comply with the First Amendment. For instance, a mark may be restricted from use where it has been found to be obscene. Obscenity is a legal category whose threshold is well above the category of immoral or offensive speech.

The restriction of a generic top-level domain is more akin to the restriction on use than to the restriction on federal trademark registration. Because restricting offensive words in Generic top-level Domains would concomitantly restrict the ability of all speakers, commercial and non-commercial, ICANN should consider legal models outside of trademark law that better address the balance of speech rights.

            This recommendation also illustrates the lack of fit between trademark law and domain name policy. Because trademark law is territorial in nature, legal standards reflect the consumer perspectives of the particular state. These standards are thus expected to vary from state to state as the way consumers respond to marks in one state may differ from the way consumers would respond to the same mark in another state. Trademark content restrictions are similar in approach. For instance, under U.S. trademark law, a mark will be refused registration if it is deemed to be scandalous or immoral when considered from the perspective of “a substantial composite of the general public.”[48] The “public” is understood to mean the U.S. public. In order to extend this legal standard to domain names it would be necessary to consider a substantial composite of the general public of the entire world. This is obviously an unworkable standard.

            Moreover, trademark law standards are always applied in the context of how a consumer would encounter the mark. Thus, the USPTO and the courts consider the entire label, what products or services are sold under the mark and what channels of commerce and marketing will be used. As a result, marks challenged as being scandalous may in fact be found to have a double entendre.[49] The extension of this trademark law standard to domain name policy thus risks prohibiting words as generic top-level domains that could well be used in inoffensive ways.

A few other observations are in order. First, under U.S. trademark law, in cases of doubt or ambiguity, both the USPTO and the Federal Circuit will pass the mark to publication to give others the opportunity to object.[50] If ICANN finally decides to employ any content restrictions, erring on the side of permitting the speech should be the rule.

Second, the Paris Convention permits rather than requires content restrictions. Article 6quinquies of the Paris Convention merely allows a Member state to deny registration to a mark duly registered in another Member state on the grounds of morality or public order.[51] This article makes clear the expectation that a mark may be acceptable in one state, while it is offensive in another. The WTO TRIPS Agreement is silent on content restrictions.[52]

Finally, although some trademarks have been denied registration under U.S. trademark law, this remains a little known or utilized provision of U.S. trademark law. Furthermore, the majority of challenges brought under this provision are brought by third parties and not the USPTO.

Thank you for your consideration.

Respectfully submitted,

Christine Haight Farley

Professor of Law and Associate Dean for Faculty and Academic Affairs

American University Washington College of Law - Washington, DC 20016

Phone: 1-202-274-4171 Fax: 1-202-274-4015

Email: cfarley@wcl.american.edu Web: www.wcl.american.edu/faculty/farley

ATTACHMENT B TO NCUC STATEMENT

 

LEGAL BRIEFING FROM LAW PROFESSOR JACQUELINE LIPTON

 

Professor of Law

Co-Director, Center for Law, Technology and the Arts

Associate Director, Frederick K Cox Center for International Law

Case Western Reserve University School of Law

New Top Level Domain Name Introduction Proposals

Briefing Paper: Some Legal Issues

Professor Jacqueline Lipton

June 6, 2007

Background

I have been asked to prepare a brief legal issues paper for IP Justice, by its Executive Director, Robin Gross. The paper is in respect of ICANN’s recent Proposed Recommendations for the introduction of new generic Top Level Domain Names (gTLDs) and the Noncommercial Users’ Constituency’s (NCUC) suggested amendments to those recommendations.[53]

Issues Raised by IP Justice and NCUC (ICANN Recommendations 3, 6. 8, and 11)

The current ICANN recommendations contemplate that ICANN should implement a process that would accommodate the introduction of new gTLDs that are not currently available to Internet domain name registrants or registries. In its recommendation paper,[54] it contemplates several principles for deciding on strings of characters that may be utilized in a new gTLD. These principles include:

·      New strings should not infringe the existing legal rights of others (Recommendation 3).

·      New strings should not be contrary to generally accepted legal norms relating to morality/public order (Recommendation 6).

·      Applications for new strings should be rejected or deferred if there is substantial opposition to a relevant string from ‘among significant established institutions of the economic sector, or cultural or language community, to which it is targeted or which it is intended to support’ (Recommendation 8).

·      ICANN staff evaluators will make preliminary determinations about applications for new gTLD strings (Recommendation 11).

 

The NCUC and IP Justice have raised particular concerns about aspects of these recommendations.[55] Specifically, they are concerned that some of ICANN’s proposals give too much weight to trademark holders’ interests without giving sufficient weight to other competing legal interests in words and phrases, such as those arising from legal concepts of free speech.[56] They have also voiced concerns that under Recommendation 6, ICANN may by default be trying to legislate internationally for morality and public order and that this may not be an appropriate burden for ICANN, as opposed to national lawmakers. They raise related concerns with respect to ICANN Recommendations 8 and 11 in the sense that these recommendations focus more on international legal and cultural norms than on the technical capacities and functions of ICANN. Recommendation 8 also raises the specter of censorship in the introduction/use of new gTLDs by bodies that have not been clearly defined in the ICANN proposals. It is also unclear how decisions would be made as to the rejection or deferral of new strings on this basis. Which organizations would be consulted? Whose policies would be applied? What experts, if any, would ICANN consult?

ICANN Recommendations 5, 9 and 12

I would add some similar concerns about the following ICANN recommendations:

·      New strings should not include country, territory or place names or words describing countries, territories, languages or peoples in the absence of agreement with relevant governments or public authorities (Recommendation 5).

·      Applications for new gTLDs must entail a clear and pre-published application process using ‘objective’ and ‘measurable’ criteria (Recommendation 9).

·      Dispute resolution processes must be established prior to the start of the relevant process (Recommendation 12).

 

Recommendation 5. This recommendation raises the specter of government censorship or control of particular gTLDs. This may or may not prove to be a problem in practice given the existence of two character country-code top level domains (ccTLDs) within the current system. These ccTLDs have apparently not, to date, created major problems, at least as compared with some of the issues arising under currently available gTLDs. However, it is possible that a new gTLD string pertaining to a country would prove to be more desirable than a corresponding ccTLD and this recommendation may give imbalances of power or control over particular new gTLDs to certain governments or public authorities. In some ways this concern mirrors the concerns of IP Justice and the NCUC about Recommendation 8 to the extent that it is unclear under that recommendation whose policies should be protected in the decision to defer or reject registration of a particular gTLD string. An associated concern with recommendation 5 is that it may not always be clear who is the relevant government or public authority who would need to agree to the use of a particular new gTLD: for example, would all Asian countries have to agree to the use of a ‘.asia’ gTLD and, if so, how should ‘Asian country’ be defined in this context and who should define it?[57] Moreoever, who should decide which ‘public authorities’ should be consulted about use of particular new gTLDs? How should ‘public authority’ be defined here?

Recommendation 9. This recommendation calls for the use of pre-published ‘objective’ and ‘measurable’ criteria in the application process for new gTLDs. It is not clear how ICANN per se would establish such criteria. If it is contemplated that ICANN would consult relevant national and international bodies or individuals in discharging this problem, then perhaps this recommendation is not so problematic. However, such a consultation process would likely take a long time and may slow down the introduction of new gTLDs for a considerable period. Such a process would entail: (a) identifying relevant expert bodies; (b) consulting with them on relevant issues: and, (c) translating relevant issues into a set of pre-published objective and measurable criteria for the new gTLD application process. This further assumes that such issues are indeed transferable to objective and measurable criteria.

Recommendation 12. Dispute resolution processes may be much more problematic in practice than contemplated by ICANN’s recommendation 12. My assumption is that Recommendation 12 refers to simple dispute resolution processes for new gTLDs such as those currently in effect under the Uniform Domain Name Dispute Resolution Policy (UDRP)[58] for some existing gTLDs. The problem here is that dispute resolution processes that take account of multiple legal interests outside commercial trademark interests are not easy in practice. Different jurisdictions, and different bodies within the same jurisdiction, may diverge widely in attitudes and even in laws on free speech, public order etc. Arbitrators under simple UDRP-style dispute resolution processes may not be equipped to handle these kinds of disputes. Dispute resolution procedures may therefore have to be somewhat more complex than is currently contemplated by ICANN if they are to take account of a variety of competing legal interests, rather than merely trademark interests. For example, while there are some things a simple arbitration process can handle well, there are other things that are much more complex and difficult and may need to be turned over to national courts or experts.[59]

General Discussion

It is important to start re-focusing the regulation of the Internet domain name system generally on interests outside of pure trademark interests. The introduction of new gTLDs and the development of processes for introducing them may provide a good opportunity for achieving this goal. However, any attempt to regulate broad policy issues relating to social and cultural norms on speech, public order and morality in domain names will be very difficult for any national or international body or group. ICANN also faces the practical difficulty that its major area of expertise is technical and functional. It is therefore important for ICANN to clarify what groups, bodies or individuals it might utilize in carrying out future legal and social developments within development of its domain name processes. In particular, ICANN should consider more specifically who to consult in formalizing specific processes for: (a) the introduction of new gTLD strings; (b) establishing dispute resolution procedures for those strings; and, (c) deciding whether the introduction of particular new strings should be deferred or rejected.

It should also be noted at the outset that many of the key problems identified by ICANN, IP Justice and the NCUC reflect legal issues that have arisen in the past with respect to existing gTLDs, although perhaps in slightly different contexts. In other words, the balance between trademark interests and other legitimate interests in Internet domain names, for example, has already proved problematic in situations involving disputes about registration and use of domain names under existing gTLDs (notably .com, .org and .net). Thus, in many ways, the ‘balance of interests’ questions in the new gTLD debates could be regarded as an extension of unresolved issues under current domain name laws and policies. The addition of new gTLD processes will likely exacerbate existing legal problems. The upside of this is that it may, and hopefully will, provide a new forum for addressing some of these problems.

In my view, it is important to put the debate about new gTLD processes into its historical context in order to properly address the concerns that have been raised here. So please bear with me for a couple of paragraphs while I describe this context and why it is important now. The current framework for regulating disputes relating to ‘.com’, ‘.net’ and ‘.org’ domain names has been focused largely on the protection of commercial trademark holders against cybersquatters.[60] There is little harmonized attention paid to the protection of other legitimate interests in relevant Internet domain names within this framework. This is evidenced in the drafting of the UDRP and the American Anti-Cybersquatting Consumer Protection Act (ACPA).[61] While these regulations do make allowances for ‘legitimate interests’ in domain names where relevant domain names have not be registered or used in bad faith,[62] they do not set out rules to affirmatively protect non-trademark-based registrations and uses of .com,. .org or .net domain names.[63] This is not particularly surprising because it was not the intention behind these rules to do so.

The historical focus on the protection of trademarks against bad faith cybersquatters is understandable within its context. These were key concerns of relevant regulators in the mid to late 1990s when e-commerce was in its infancy, and governments wanted to encourage this new medium of commerce. It was widely thought – although not universally agreed – that bad faith cybersquatting per se was a socially wasteful activity that potentially harmed the development of electronic commerce without producing any associated social benefits.[64] There is probably nothing inherently wrong with the UDRP and ACPA in this respect. They did deal with a real world problem and, in many respects, they are now old news. Presumably, this is why debates today about the introduction of new gTLD processes do not dwell on the rules and regulations implemented in 1999. However, those rules and regulations have raised new post-1999 problems that have not yet been addressed in a systematic way.[65]

Issues under the existing domain name system that relate to the balance of trademark interests with other legitimate interests in domain names do include the need to balance trademark interests with interests such as: interests in personal names, cultural and geographic indicators, free speech (including the right to parody, comment on and criticize a trademark holder), other basic human rights, and rights to free and democratic government.[66] ICANN has identified some of these issues in its recommendations. IP Justice and the NCUC have raised concerns about clarification of, as well as appropriate implementation of, ICANN’s stated goals here.

The main problem for ICANN in identifying and implementing these kinds of ‘interest balancing ideals’ is that, as with its administration of existing gTLDs, ICANN’s expertise is largely technical and functional. It is not a body staffed with people whose main expertise is to deal with these difficult balances of competing legal and social interests in multiple societies around the world. Effectively bringing debates about international public order and morality, as well as free speech and human rights generally, into a predominantly technical process comes at a high cost. However, failing to address these issues in a relevant forum also comes at a high cost, as previous and current experiences have shown us.

What is needed at this point is a combination of the following: (1) ensuring that the technical aspects of this process do not somehow become a default proxy to legislate for important and complex national and international social, cultural and legal norms; (2) more clearly identifying bodies or individuals who can appropriately identify and make recommendations on relevant issues within the development of the more technical aspects of the process; and, (3) ensuring that these bodies are brought into the relevant process in time to prevent damage to important legal and social interests. To some extent, that may be what is happening at the moment, but this process may need to be more formalized to avoid exacerbating some of the problems that have arisen in the past under the current domain name system.

Conclusions

The aim of this briefing paper has been to raise awareness of ideas that may be pertinent in the ongoing process to develop new gTLDs. My hope is that this paper generates, or at least facilitates, useful debate in this context. There are, as yet, no clear solutions to many of the problems addressed. We seem to be at a point in the development of the new gTLD processes where it would be useful to more fully identify and discuss relevant legal and social issues, as well as bodies and individuals that may be best suited to advise on them, and ultimately help draft and implement regulations about them where possible. This is an important time in the development of the domain name system and this kind of debate and development would prove extremely useful, particularly in order to avoid some of the practical problems with respect to new gTLDs that are already evident in the administration of domain names registered under existing gTLDs.

Jacqueline D. Lipton, Ph.D.

Professor of Law

Co-Director, Center for Law, Technology and the Arts

Associate Director, Frederick K Cox Center for International Law

Case Western Reserve University School of Law

11075 East Blvd, Cleveland, Ohio, 44106, USA

Email: JDL14@case.edu        Tel: + 1 216 368 3303            Fax: + 1 216 368 2086