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PDP Review of All Rights Protection Mechanisms in All gTLDs (view source)

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== Background ==
 
== Background ==
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ICANN's [[Rights Protection Mechanisms]] allow the holders of intellectual property rights, such as trademarks, to defend those rights in the domain name space. In 1999, the [[UDRP|Uniform Domain-Name Dispute-Resolution Policy]] (UDRP) was established to resolve disputes relating to the registration of domain names.<ref name="issues">[https://gnso.icann.org/sites/default/files/filefield_48143/rpm-prelim-issue-09oct15-en.pdf GNSO - Preliminary Issue Report</ref> Ahead of the [[new gTLD Program]], several new RPMs were developed: the [[Trademark Clearinghouse]] (TMCH), [[Uniform Rapid Suspension]] (URS), and [[Trademark Post-Delegation Dispute Resolution Procedure]] (PDDRP). The TMCH provides a central clearinghouse for trademark registrations and provides verification of registrations for all registries and registrars. The URS gives trademark holders a quick and inexpensive means of suspending domain names that are easily proven to be infringing on a given trademark. The PDDRP provides remedy or compensation for trademark holders who were harmed by a gTLD registry operator.<ref name="issues />
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ICANN's [[Rights Protection Mechanisms]] allow the holders of intellectual property rights, such as trademarks, to defend those rights in the domain name space. In 1999, the [[UDRP|Uniform Domain-Name Dispute-Resolution Policy]] (UDRP) was established to resolve disputes relating to the registration of domain names.<ref name="issues">[https://gnso.icann.org/sites/default/files/filefield_48143/rpm-prelim-issue-09oct15-en.pdf GNSO - Preliminary Issue Report</ref> Ahead of the [[new gTLD Program]], several new RPMs were developed: the [[Trademark Clearinghouse]] (TMCH), [[Uniform Rapid Suspension]] (URS), and [[Trademark Post-Delegation Dispute Resolution Procedure]] (PDDRP). The TMCH provides a central clearinghouse for trademark registrations and provides verification of registrations for all registries and registrars. The URS gives trademark holders a quick and inexpensive means of suspending domain names that are easily proven to be infringing on a given trademark. The PDDRP provides remedy or compensation for trademark holders who were harmed by a gTLD registry operator.<ref name="issues" />
   −
In February 2011, the GNSO Council requested an Issues Report in accordance with the recommendations of the [[Registration Abuse Policies Working Group]]. In response, ICANN staff reviewed the UDRP ahead of the New gTLD Program, releasing its report in October 2011, recommending that the GNSO hold off on forming a PDP until the URS had been in effect for at least 18 months. Later, the GNSO Council asked ICANN to begin an Issue Report on all RPMs (including but not limited to the UDRP and URS) in December 2011.<ref name="gnsohub" /> ICANN staff submitted the Final Issue Report in January 2016, and the WG was chartered in March 2016.<ref name="gnsohub" /> According to the WG charter, the group will operate in two phases with the first being to evaluate all RPMs developed for the New gTLD Program and the second being to review the UDRP.<ref name="charter">[https://gnso.icann.org/sites/default/files/filefield_48755/rpm-charter-15mar16-en.pdf Review of all RPMs Charter], March 15, 2016</ref>  
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In February 2011, the GNSO Council requested an Issues Report in accordance with the recommendations of the [[Registration Abuse Policies Working Group]]. In response, ICANN staff reviewed the UDRP ahead of the New gTLD Program, releasing its report in October 2011, but recommending that the GNSO hold off on forming a PDP until the URS had been in effect for at least 18 months. Later, the GNSO Council asked ICANN to begin an Issue Report on all RPMs (including but not limited to the UDRP and URS) in December 2011.<ref name="gnsohub" />  
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ICANN org prepared and published a Preliminary Issue Report for public comment in October 2015.<ref name="issuepc">[https://www.icann.org/en/public-comment/proceeding/preliminary-issue-report-on-a-gnso-policy-development-process-to-review-all-rights-protection-mechanisms-in-all-gtlds-09-10-2015 ICANN.org - Public Comment Proceeding, Preliminary Issue Report on all RPMs], October 2015</ref> Twenty-two comments were submitted, with the majority coming from trade organizations, SOs, and ACs.<ref>[https://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/ ICANN.org Listserv Archive - Public Comments to Preliminary Issue Report on all RPMs], October-November 2015</ref> Commenters addressed both questions posed by the Preliminary Issue Report and the findings contained within the report. The Final Issue Report noted some principal themes and points:
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The PDP Review of RPMs in all gTLDs was spun out of the Final Issue Report on the current state of the UDRP in 2011 and the subsequent Issue Report on the current state of all RPMs in 2016.<ref name="gnsohub" />
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* A majority of commenters saw no reason to review the UDRP, and some (including [[WIPO]]) thought such a review could be potentially disruptive and damaging to the efficient operation of the UDRP. Others saw no harm in reviewing, while some commenters advocated for review of the UDRP for purposes of process improvement;
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* The URS was a subject of some criticism and concern regarding scope and operation; and
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* The issues raised in earlier public comment processes, as well as those identified in earlier issue reports, should be examined and prioritized by the Working Group, if one was launched.
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After processing and integrating public comment submissions, ICANN staff submitted the Final Issue Report in January 2016.<ref name="finalissrep">[https://gnso.icann.org/en/issues/new-gtlds/rpm-final-issue-11jan16-en.pdf GNSO Archive - Final Issue Report, Rights Protection Mechanisms in all gTLDs], January 11, 2016</ref> Alterations and additions based on public comment were contained in Section 3 of the report.<ref name="finalissrep" />
    
The PDP was initiated in February 2016 to review all RPMs in two phases:
 
The PDP was initiated in February 2016 to review all RPMs in two phases:
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*PHASE 1: All RPMs applicable to New gTLDs (2012 Program)
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* PHASE 1: All RPMs applicable to New gTLDs (2012 Program)
 
**[[Trademark Post-Delegation Dispute Resolution Procedure]] (PDDRP);
 
**[[Trademark Post-Delegation Dispute Resolution Procedure]] (PDDRP);
 
**[[Trademark Clearinghouse]] (TMCH); and
 
**[[Trademark Clearinghouse]] (TMCH); and
 
**[[Uniform Rapid Suspension]] (URS)
 
**[[Uniform Rapid Suspension]] (URS)
 
* PHASE 2: Uniform Domain Name Dispute Resolution Policy (UDRP)
 
* PHASE 2: Uniform Domain Name Dispute Resolution Policy (UDRP)
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The Working Group's charter was finalized in March 2016.<ref name="gnsohub" /><ref name="charter">[https://gnso.icann.org/sites/default/files/filefield_48755/rpm-charter-15mar16-en.pdf Review of all RPMs Charter], March 15, 2016</ref>
    
==Phase 1 Review of New gTLD Program RPMs==
 
==Phase 1 Review of New gTLD Program RPMs==
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===Initial Report===
 
===Initial Report===
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The initial report's findings included a number of conflicts between existing rights protection mechanisms and the [[GDPR]].<ref name="initialrep" /> The WG noted, for example, that the procedural rules of the [[Uniform Rapid Suspension System]] (URS) had filing requirements that included information that the provisions within the [[Temporary Specification for gTLD Registration Data]] no longer required. As a result, amendments were proposed regarding the specificity of information necessary to file a complaint.<ref name="initialrep" /> The questions to the community sought public input on the workability of the protection mechanisms and specific input from registry operators regarding their experience receiving and processing complaints and other transactions with complainants or petitioners.<ref name="initialrep" /> The proposals from individual WG members dealt with the URS and the [[Trademark Clearinghouse]], specifically. The report noted that some of the rationales behind the proposals were not necessarily supported by the findings of the WG.<ref name="initialrep" />
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The initial report's findings included a number of conflicts between existing rights protection mechanisms and the [[GDPR]].<ref name="initialrep" /> The WG noted, for example, that the procedural rules of the [[Uniform Rapid Suspension System]] (URS) had filing requirements that included information that the provisions within the [[Temporary Specification for gTLD Registration Data]] no longer required. As a result, amendments were proposed regarding the specificity of information necessary to file a complaint.<ref name="initialrep" /> The questions to the community sought public input on the workability of the protection mechanisms and specific input from registry operators regarding their experience receiving and processing complaints and other transactions with complainants or petitioners.<ref name="initialrep" /> The proposals from individual WG members dealt with the URS and the [[Trademark Clearinghouse]], specifically. The report noted that some of the rationales behind the individual proposals were not necessarily supported by the findings of the WG.<ref name="initialrep" />
    
Public comments on the initial report were extensive - forty-four comments were received from organizations and twelve people submitted comments in their individual capacity.<ref>[https://www.icann.org/en/system/files/files/report-comments-rpm-initial-report-18may20-en.pdf ICANN.org - Staff Report on Public Comment Proceeding, PDP-RPM Initial Report], May 18, 2020</ref> For ease of analysis, the WG created a matrix of comments received on specific recommendations, questions, and proposals.<ref name="initialpc">[https://community.icann.org/display/RARPMRIAGPWG/Phase+1+Initial+Report+Public+Comment+Review PDP-RPM Workspace - Public Comment Review], last updated July 2020</ref> Notably, [[WIPO]] objected to the focus and subject matter of the Phase 1 Working Group's charter, stating regarding the overarching charter questions:
 
Public comments on the initial report were extensive - forty-four comments were received from organizations and twelve people submitted comments in their individual capacity.<ref>[https://www.icann.org/en/system/files/files/report-comments-rpm-initial-report-18may20-en.pdf ICANN.org - Staff Report on Public Comment Proceeding, PDP-RPM Initial Report], May 18, 2020</ref> For ease of analysis, the WG created a matrix of comments received on specific recommendations, questions, and proposals.<ref name="initialpc">[https://community.icann.org/display/RARPMRIAGPWG/Phase+1+Initial+Report+Public+Comment+Review PDP-RPM Workspace - Public Comment Review], last updated July 2020</ref> Notably, [[WIPO]] objected to the focus and subject matter of the Phase 1 Working Group's charter, stating regarding the overarching charter questions:
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| 1 - Clarify the scope and applicability of the TMCH in accordance with agreed policy principles: only registered or otherwise validated word marks are eligible; geographical indicators, regional appellations, and other protection designations of origin or source are not eligible unless they are also registered marks; and TMCH validation providers that also provide services related to non-registered trademarks must maintain those other forms of IP in a separate database
 
| 1 - Clarify the scope and applicability of the TMCH in accordance with agreed policy principles: only registered or otherwise validated word marks are eligible; geographical indicators, regional appellations, and other protection designations of origin or source are not eligible unless they are also registered marks; and TMCH validation providers that also provide services related to non-registered trademarks must maintain those other forms of IP in a separate database
 
| Individual Proposals #4 and #5 from the Initial Report
 
| Individual Proposals #4 and #5 from the Initial Report
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| Public comments received regarding the individual proposals led the WG to believe that the TMCH procedures, and any subsequent Applicant Guidebook, should specify the listed policy principles.
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| Public comments received regarding the individual proposals led the WG to believe that the TMCH procedures, and any subsequent Applicant Guidebook, should specify the listed policy principles.*
 
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|-
 
| TMCH
 
| TMCH
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| At the time of the Final Report, there had been zero complaints filed under the TM-PDDRP. Expressly permitting joinder of claims might increase efficiency and reduce costs for claimants with common cause against a specific registry operator. There was no consensus proposal for otherwise improving or making the PDDRP a more attractive solution for prospective claimants.
 
| At the time of the Final Report, there had been zero complaints filed under the TM-PDDRP. Expressly permitting joinder of claims might increase efficiency and reduce costs for claimants with common cause against a specific registry operator. There was no consensus proposal for otherwise improving or making the PDDRP a more attractive solution for prospective claimants.
 
|}
 
|}
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*TMCH Final Recommendation #1 was the subject of a Minority Statement from certain members of the WG. The minority statement argued that the lack of a formal definition of "word mark" expanded the rights of mark holders under the proposed policy principles.<ref name="1finalrep" />
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===Public Comment===
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The Final Report received nine comments, primarily from industry groups and ICANN bodies.<ref name="finalpc">[https://www.icann.org/en/public-comment/proceeding/gnso-review-of-all-rights-protection-mechanisms-in-all-gtlds-policy-development-process-phase-1-final-recommendations-for-icann-board-consideration-07-04-2021 ICANN.org - Public Comment Proceeding, PDP-RPM Final Report], last modified June 4, 2021</ref> The comments from ICANN bodies were largely positive and encouraged the ICANN Board to adopt all of the recommendations.<ref name="finalpc" />
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===GNSO Council and Board Action===
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In addition to approving the Final Report, the GNSO Council submitted its own report to the ICANN Board in February 2021<ref name="dashboard">[https://gnso.icann.org/en/group-activities/active/rpm GNSO Active Projects - PDP-RPM], last updated August 30, 2021</ref> As of December 2021, the Board has not acted on the Final Report.<ref name="dashboard" />
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==Phase 2 - Review of UDRP==
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As of May 2022, Phase 2 of the PDP had not yet been initiated.<ref>[https://community.icann.org/display/gnsocouncilmeetings/Project+List GNSO Council Workspace - Project List], last updated December 4, 2021</ref> However, preliminary steps have been taken. Expecting to reexamine the PDP charter in light of some of the criticisms of Phase 1, the GNSO requested a [[Policy Status Report]] (PSR) on the UDRP from ICANN org, which was published for public comment on March 3, 2022.<ref name="psr">[https://itp.cdn.icann.org/en/files/consensus-policy/udrp-policy-status-report-03-03-2022-03-03-2022-en.pdf UDRP Policy Status Report], March 3, 2022 (PDF)</ref><ref name="psrpc">[https://www.icann.org/en/public-comment/proceeding/policy-status-report-uniform-domain-name-dispute-resolution-policy-udrp-03-03-2022 ICANN Public Comment Archive - UDRP Policy Status Report]</ref> The public comment period ended on April 19, 2022, with 44 comments submitted.<ref name="psrpcreport">[https://itp.cdn.icann.org/en/files/consensus-policy/public-comment-summary-report-udrp-policy-status-10-05-2022-en.pdf Public Comment Summary Report - UDRP Policy Status Report], published May 10, 2022</ref>
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===Policy Status Report===
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The PSR assessed the effectiveness of the UDRP across three parameters:
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# Efficiency
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# Fairness
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# Preventing Abuse
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====Efficiency====
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The PSR measured efficiency largely by presenting statistics related to the "cost and time efficiency of the UDRP in dealing with disputes involving abusive registrations of domain names." As a result, the report predominantly focused on the number of filings, the costs associated with UDRP complaints, and the length of proceedings.<ref name="psr" /> The statistics showed an upward trend in filings year over year.
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====Fairness====
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The report stated that the UDRP rules are designed to ensure due process and procedural fairness. However, the PSR noted a variety of community concerns, including [[Reverse Domain Name Hijacking]], disproportionately high costs for trademark holders, lack of clear guidelines around fair use and safe harbor provisions, and other issues.<ref name="psr" />
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====Preventing Abuse====
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The PSR stated "it is plausible that cases are brought to panels by entities that can adduce sufficient evidence to meet the three-part test. Furthermore, this may also indicate that the Policy is effective at targeting straightforward cases of cybersquatting and thus achieving its intended purpose of successfully addressing abusive domain name registrations."<ref name="psr" /> The report goes on to suggest that the consistently high rate of decisions in favor of complainants supports the notion that the UDRP is meeting its goal of preventing abusive registrations.<ref name="psr" />
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====Public Comment on the PSR====
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The PSR received 41 comments.<ref name="psrpcreport" /><ref name="psrpc" /> The comments were polarized around the effectiveness of the UDRP as a shield preventing abusive registrations versus its use as a sword to claim domains that were not violating a mark holder's rights. The [[IPC]]<ref>[https://www.icann.org/en/public-comment/proceeding/policy-status-report-uniform-domain-name-dispute-resolution-policy-udrp-03-03-2022/submissions/intellectual-property-constituency--19-04-2022 Intellectual Property Constituency Public Comment Submission], April 19, 2022</ref> and [[INTA]]<ref>[https://www.icann.org/en/public-comment/proceeding/policy-status-report-uniform-domain-name-dispute-resolution-policy-udrp-03-03-2022/submissions/international-trademark-association-inta-18-04-2022 International Trademark Association Public Comment Submission], April 18, 2022</ref> both considered review or reform of the UDRP as a low-priority issue for ICANN.<ref name="psrpcreport" /> However, many advocates for an unfettered secondary market in domains saw potential for consensus improvements:
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* The [[Internet Commerce Association]] saw opportunities for improvements on both sides: "The ICA strongly believes that improvements to the UDRP are not a “zero-sum game” in which improvements that benefit domain name registrants necessarily harm trademark owners or vice versa. There is ample opportunity to improve the UDRP for all concerned stakeholders. A more efficient process without unnecessary delays benefits trademark owners but does not necessarily harm registrants. Improved interpretative consistency and addressing procedural gaps would benefit legitimate registrants but would not harm the enforcement objectives of brand owners."<ref>[https://www.icann.org/en/public-comment/proceeding/policy-status-report-uniform-domain-name-dispute-resolution-policy-udrp-03-03-2022/submissions/internet-commerce-association-19-04-2022 ICA Public Comment Submission], April 19, 2022</ref>
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* Similarly, [[Telepathy, Inc.]] saw the review as an opportunity to improve the process for everyone: "The review is an opportunity for all stakeholders to preserve the essentials of the UDRP while exploring areas to improve the UDRP for the benefit of all who are affected by the policy. There are opportunities to reduce the burden and increase the efficacy of the UDRP for brand owners. There are opportunities to clarify the legitimate rights of good faith participants in the domain name secondary market."<ref>[https://www.icann.org/en/public-comment/proceeding/policy-status-report-uniform-domain-name-dispute-resolution-policy-udrp-03-03-2022/submissions/telepathy-inc-15-04-2022 Telepathy, Inc. Public Comment Submission], April 15, 2022</ref>
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* The [[Business Constituency]] saw a similar opportunity for focused, data-driven, expert-informed improvements to the UDRP as a whole that did not destablize established precedent or case law: "The Status Report has done a good job of laying out the general UDRP framework and environment, though it is not intended to serve as a comprehensive repository for all relevant data and viewpoints. It is imperative that stakeholders do not unnecessarily open up a can of worms with the UDRP through destabilizing changes; rather, they should take a focused and targeted approach, only entertaining improvements and enhancements which stand a reasonable chance of gaining consensus amongst stakeholders, and focus primarily on issues that have emerged since the UDRP was first formulated, such as WHOIS redaction and the launch of the new gTLD program."<ref>[https://www.icann.org/en/public-comment/proceeding/policy-status-report-uniform-domain-name-dispute-resolution-policy-udrp-03-03-2022/submissions/icann-business-constituency-19-04-2022 Business Constituency Public Comment Submission], April 19, 2022</ref>
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===Initiation of Phase 2===
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It is expected that Phase 2 will begin at or around [[ICANN 74 - The Hague|ICANN 74]].
    
==References==
 
==References==
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