PDP Review of All Rights Protection Mechanisms in All gTLDs

PDP Review of All Rights Protection Mechanisms in All gTLDs
Status:	Active
Issue Areas:	Dispute Resolution
Date Established:	February 2016
Charter:	WG Charter
Workspace:	Community Wiki

The Policy Development Process (PDP) Review of All Rights Protection Mechanisms in All gTLDs is a GNSO project established in 2016 to review the full range of rights protection mechanisms (RPMs) within the domain space..

Background

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 Uniform Domain-Name Dispute-Resolution Policy (UDRP) was established to resolve disputes relating to the registration of domain names. 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.

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. ICANN org prepared and published a Preliminary Issue Report for public comment in October 2015. Twenty-two comments were submitted, with the majority coming from trade organizations, SOs, and ACs. 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:

• 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;
• The URS was a subject of some criticism and concern regarding scope and operation; and
• 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.

After processing and integrating public comment submissions, ICANN staff submitted the Final Issue Report in January 2016. Alterations and additions based on public comment were contained in Section 3 of the report.

The PDP was initiated in February 2016 to review all RPMs in two phases:

• PHASE 1: All RPMs applicable to New gTLDs (2012 Program)
  • Trademark Post-Delegation Dispute Resolution Procedure (PDDRP);
  • Trademark Clearinghouse (TMCH); and
  • Uniform Rapid Suspension (URS)
• PHASE 2: Uniform Domain Name Dispute Resolution Policy (UDRP)

The Working Group's charter was finalized in March 2016.

Phase 1 Review of New gTLD Program RPMs

The Working Group's initial report was completed in March 2020. It presented twenty-six recommendations, seventeen questions for the community regarding specific aspects of the new gTLD rights protection mechanisms, and twenty-four proposals submitted by WG members that had not yet risen to the level of consensus recommendations. The WG sought public input on all of those recommendations, questions, and proposals, with an eye toward drafting a final report and recommendations.

Initial Report

The initial report's findings included a number of conflicts between existing rights protection mechanisms and the GDPR. 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. 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. 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.

Public comments on the initial report were extensive - forty-four comments were received from organizations and twelve people submitted comments in their individual capacity. For ease of analysis, the WG created a matrix of comments received on specific recommendations, questions, and proposals. Notably, WIPO objected to the focus and subject matter of the Phase 1 Working Group's charter, stating regarding the overarching charter questions:

That these questions still need to be asked shows a failure (stemming from the open-ended charter) of the Working Group effort to consider the relation of the URS and UDRP (a relationship that was to some extent considered in the initial design of the URS). This speaks to the need to give due serious consideration to any charter for a Review Team or Working Group tasked with reviewing the UDRP (any such charter should learn from the flaws in the current Phase I charter).

Final Report

The Working Group's final report was issued in November 2020. The final report contained thirty-five recommendations, with associated "implementation guidance" for new policies or modifications to existing procedures. The recommendations dealt mainly with the URS, Trademark Clearinghouse, and Sunrise and trademark claims periods for new gTLDs, with a single recommendation pertaining to the Trademark Post-Delegation Dispute Resolution Procedure.

Recommendation Summary Table

RPM	Final Recommendation	Origin	Rationales
URS	1 - Modify rules to permit complainants to include only publicly-available registrant contact information; amend registration data within 2-3 days	Initial Report Recommendation	Changing data privacy environment thanks to GDPR, other privacy concerns, and ICANN-approved practices.
URS	2 - Parties to a URS proceeding may request redaction of registrant data, and URS panelists/providers may redact such information sua sponte	Public comment	Review of public comment from URS Question #1 of the Initial Report; current WIPO practice regarding redaction of respondent's names in final determinations; and EPDP Temp Spec Purpose 6-PA5.
URS	3 - Modify rules so that, unless otherwise agreed by the parties, the language of the URS proceeding shall be the language of the underlying registrant agreement	Initial Report Recommendation #9 and Individual Proposal #34	Current rules mandate English as the official language of proceedings, which could disadvantage non-English speaking complainants & respondents; wide support for Individual Proposal #34 in the public comments to the initial report.
URS	4 - Modify rules so that the Notice of Complaint is submitted in English, with a translation provided in the language of the Registry Agreement; enforce rule that notice be delivered via email, fax, and postal mail	Initial Report Recommendation #3, and public comment	Maintain consistency with Final Recommendation #3 re: languages; WG found variance in compliance with the rule regarding delivery of notice.
URS	5 - Amend rules to define "Default Period" and limit restrictions specific to the Default Period to alteration of registrant data; remove references to "changing content" on the subject domain	Individual Proposal #1 from the Initial Report	"Default Period" is not currently defined; "changing content" is better included in other provisions regarding the URS panelist's evalutation of bad faith
URS	6 - URS Providers to maintain a list of its affiliated examiners and their curriculum vitae; providers shall publish a roster of examiners, including frequency of case appointments and links to each examiner's decision	Individual Proposals #26 & 27 from the Initial Report	Wide support for the individual proposals; WG was guided by providers regarding practical implementation recommendations
URS	7 - Each URS provider to publish and abide by a conflict of interest policy for examiner selection	Individual Proposal #28 from the Initial Report	Wide support for the proposal, with some detractors regarding aspects the original wording; modified recommendation text met demand for the proposal while restricting overreach
URS	8 - ICANN org to create a review mechanism for provider and party compliance with URS rules, proceedings, and determinations; provide an avenue for complaints and resolutions related to compliance issues	Initial Report Recommendation #4	Working group found instances of noncompliance which were confirmed by responses to URS Question #2 during the public comment period
URS	9 - develop a uniform set of educational materials to provide guidance for URS practitioners, parties, and examiners on meeting the "clear and convincing" burden of proof standard of evidence	Initial Report Recommendation #6	Public comment positive, but providers and practitioners did not heavily support. WG clarified in its rationale that the guidance was not intended to define the standard for examiners; rather, it was intended to be educational in nature
URS	10 - informational materials should be developed & posted on URS providers' websites, including: a uniform FAQ; links to provider forms; and reference materials describing the provider's services and practices	Initial Report Recommendation #10	Seeks to establish a baseline understanding of URS procedure for parties to complaints
URS	11 & 12 - URS provider to send notices to respondent once they have received relevant contact details from the registry/registrar; providers, registries, and registrars to routinely ensure that their contact information is up to date	Initial Report Recommendations #2 & #5	Ensuring notice requirements are met
URS	13 - URS providers should require examiners to document their rationale in sufficient detail to explain how the decision was reached	Initial Report Recommendation #7	Some determinations lack complete rationales or descriptions of the examiner's thought process; recommendation was amended to ensure a minimum standard without being overly prescriptive
URS	14 - Implementation Review Team to review implementation issues regarding URS "High Level Technical Requirements" Registry Requirement #10	Initial Report Recommendation #8	WG noted a significant percentage of registries and registrars were confused regarding their role in implementing suspensions under the URS, specifically the extension of registration of suspended URLs.
URS	15 - Rename URS policies related to technical requirements for registries and registrars	Individual Proposal #2 from the Initial Report	Public comment revealed broad support for Individual Proposal #2, with preference given to the second approach suggested within the proposal - this recommendation was generated to put that proposal forward as a community- and WG-supported recommendation.
TMCH	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	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.*
TMCH	2 - Maintain the following status quo rules: allow trademark owners to submit up to 50 "previously abused domain name labels" in association with a listed trademark; require an exact match with the word mark for trademark claims during the Trademark Claims period of a new gTLD; and allow trademark holders of "dictionary terms" to make Sunrise registrations or make claims during the Trademark Claims period of any new gTLD, regardless of the relation of the gTLD to the category of goods or services in which the word mark is registered	Initial Report TMCH Recommendation #1	In the absence of wide support in the public comments for amendments to these rules, the recommendation is to leave them as is.
TMCH	3 - The TMCH Validation Provider should be primarily responsible for educating rights-holders, domain name registrants, and potential registrants about its service: IRT to assist with enhancing existing educational materials	Individual Proposal #1 from the Initial Report	Positive public response to the individual proposal led to the development of this recommendation
TMCH	4 - TMCH database provider should be contractually bound to maintain, at minimum, industry-standard levels of redundancy and uptime	Individual Proposal #6 from the Initial Report	Wide support for this proposal in the public comments.
Sunrise	1 - Registry Agreement for future new gTLDs should include a provision stating that a Registry Operator shall not operate its TLD in such a way as to have the effect of circumventing mandatory RPMs or restricting brand owners' use of the Sunrise period	Initial Recommendation #2	Based on public comments, WG has clarified that this recommendation is not intended to restrict legitimate business practices; however, the recommendation received wide support from the public and within the WG
Sunrise	2 - Maintain mandatory Sunrise period, except for .brand TLDs.	Initial Recommendation #6	In response to public comments, the WG has retained this recommendation but added an exemption for .brand domains
Sunrise	3 - Maintain current minimum time requirements for Sunrise periods, including 30-day Start Date Sunrise and a 60-day End Date Sunrise.	Initial Recommendation #5	In the absence of wide support for change, the WG believes that the status quo should be preserved.
Sunrise	4 - Maintain current requirement that Sunrise registrations be an identical match to the registered trademark being protected.	Initial Recommendation #1	No wide support for change.
Sunrise	5 - Sunrise registrations shall remain available without limitation based on the class(es) of goods or services for which the trademark is actually registered	Initial Recommendation #8	No wide support for change.
Sunrise	6 - Do not implement a challenge mechanism relating to registry operators' determinations of premium or reserved domain names.	Initial Recommendation #3	No wide support for change.
Sunrise	7 - Do not require publication of reserved names lists by registry operators.	Initial Recommendation #4	No wide support for change.
Sunrise	8 - TMCH dispute resolution procedure should be the primary mechanism for challenging the validity of the trademark record on which a registrant based its Sunrise registration.	Initial Recommendation #7	Public comments provided refinements to the language of this recommendations, although it remains unchanged in substance.
TM Claims	1 - Maintain uniform mandatory Claims Period for all types of gTLDs in subsequent rounds, including the 90-day minimum initial Claims Period, with the exception of .brand TLDs.	Initial Recommendation #5	Wide community support for exempting .brand domains; recommendation was amended to create that exclusion.
TM Claims	2 - Trademark Claim Notice should be written in English and accompanied by a translation in the language of the underlying registration agreement.	Initial Recommendation #2	Wide support for this recommendation during the public comment phase; aligns with changes in other RPMs regarding language of proceedings.
TM Claims	3 - Maintain a mandatory Claims Period of at least 90 days; if the registry operator offers a limited registration period after the Sunrise period, the Trademark Claims Period must continue throughout the limited registration period.	Initial Recommendation #4	Wide support for this recommendation; WG noted that some registry operators were already running claims periods that extended for longer than ninety days.
TM Claims	4 - Maintain current "exact match" requirements for the Claim Notice.	Initial Recommendation #6	WG determined this rule strikes an appropriate balance between deterrence and over-regulation. Final Recommendation #6 addresses additional balancing recommendations.
TM Claims	5 - Maintain current rule that the Claim Notice may only be sent prior to completion of registration.	Initial Recommendations #3	WG determined that the current timeframe for claims notices was working as intended.
TM Claims	6 - Revise required language for Claims Notices according to the implementation guidance.	Initial Recommendation #1 & Question #1	WG proposed revisions in its initial report and refined its recommendations based on public comment feedback.
TM-PDDRP	1 - Permit joinder of claims under the Trademark Post-Delegation Dispute Resolution process; allow claimants to initially file a joint action of similar claims against a registry operator; allow PDDRP panel to join claims at their discretion and upon request.	Initial Recommendation #1	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.

• 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.

Public Comment

The Final Report received nine comments, primarily from industry groups and ICANN bodies. The comments from ICANN bodies were largely positive and encouraged the ICANN Board to adopt all of the recommendations.

GNSO Council and Board Action

In addition to approving the Final Report, the GNSO Council submitted its own report to the ICANN Board in February 2021 As of December 2021, the Board has not acted on the Final Report.

Phase 2 - Review of UDRP

As of May 2022, Phase 2 of the PDP had not yet been initiated. 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. The public comment period ended on April 19, 2022, with 44 comments submitted.

Policy Status Report

The PSR assessed the effectiveness of the UDRP across three parameters:

1. Efficiency
2. Fairness
3. Preventing Abuse

Efficiency

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. The statistics showed an upward trend in filings year over year.

Fairness

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.

Preventing Abuse

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." 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.

Public Comment on the PSR

The PSR received 41 comments. 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 and INTA both considered review or reform of the UDRP as a low-priority issue for ICANN. However, many advocates for an unfettered secondary market in domains saw potential for consensus improvements:

• 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."
• 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."
• 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."

Initiation of Phase 2

It is expected that Phase 2 will begin at or around ICANN 74.

Policy Development Process

Uniform Domain Name Dispute Resolution Policy

Generic Names Supporting Organization. Develops and recommends to the Board substantive policies relating to generic top-level domains and other responsibilities set forth in the Bylaws (ICANN Bylaws).

General Data Protection Regulation

World Intellectual Property Organization

Top-Level Domain