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, 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 staff submitted the Final Issue Report in January 2016, and the WG was chartered in March 2016. 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.

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.

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)

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 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 Tables

URS

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.