3,197
edits
Changes
Jump to navigation
Jump to search
Line 33:
Line 33: − + − + − + − + − + + + + + + + + + + + + + − + + + − The second phase will deal solely with the UDRP.<ref>[https://community.icann.org/display/RARPMRIAGPWG ICANN.org Working Group workspace - RPMs in all gTLDs]</ref> −
→Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)
The UDRP has remained unchanged since its adoption. The policy has been largely successful. In 2010, ICANN received reports of community concerns about variations in process between different dispute resolution services, and the risk of "forum shopping" to achieve favorable results.<ref name="providers" /> After a review of those concerns and all of its service providers, ICANN issued a memo regarding the uniformity of application of the UDRP rules in 2013.<ref name="udrpstatus">[https://www.icann.org/en/help/dndr/udrp/providers/uniformity-process-19jul13-en.pdf UDRP Providers and Uniformity of Process - Status Report], July 2013 (PDF)</ref> Although they noted that each provider can set its own procedural rules, ICANN found no indication that service providers were varying in their application of the UDRP rules.<ref name="udrpstatus" /> They noted further that variation in processes (as well as localized language understanding) provided diversity of choice for claimants, and that the "forum shopping" claims did not have support within the actual results under the UDRP rules.<ref name="udrpstatus" />
The UDRP has remained unchanged since its adoption. The policy has been largely successful. In 2010, ICANN received reports of community concerns about variations in process between different dispute resolution services, and the risk of "forum shopping" to achieve favorable results.<ref name="providers" /> After a review of those concerns and all of its service providers, ICANN issued a memo regarding the uniformity of application of the UDRP rules in 2013.<ref name="udrpstatus">[https://www.icann.org/en/help/dndr/udrp/providers/uniformity-process-19jul13-en.pdf UDRP Providers and Uniformity of Process - Status Report], July 2013 (PDF)</ref> Although they noted that each provider can set its own procedural rules, ICANN found no indication that service providers were varying in their application of the UDRP rules.<ref name="udrpstatus" /> They noted further that variation in processes (as well as localized language understanding) provided diversity of choice for claimants, and that the "forum shopping" claims did not have support within the actual results under the UDRP rules.<ref name="udrpstatus" />
===[[New gTLD Program]] Mechanisms: 2013===
===[[New gTLD Program]] Mechanisms: 2009-2014===
As part of the New gTLD Program, ICANN introduced a variety of rights protection mechanisms to address specific concerns of rights holders and advisory committees, as well as to comply with international law and treaties.
As part of the New gTLD Program, ICANN introduced a variety of rights protection mechanisms to address specific concerns of rights holders and advisory committees, as well as to comply with international law and treaties. Work on intellectual property issues began in 2009, when ICANN assembled an Implementation Recommendation Team of intellectual property professionals to assist with recommendations for the New gTLD Program. Their final report, issued in May 2009, contained recommendations for many of the rights protection mechanisms that would be introduced in the following years.<ref>[http://archive.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf ICANN Archive - IRT Final Report], May 29, 2009 (PDF)</ref>
====International Nongovernmental Organizations (INGO) Claims Notification====
====International Nongovernmental Organizations (INGO) Claims Notification====
As part of its Protection of IGO and INGO Identifiers in All gTLDs Policy,<ref name="ingo">[https://www.icann.org/resources/pages/igo-ingo-protection-policy-2020-02-18-en ICANN.org - Protection of IGO & INGO Identifiers in all gTLDs Policy]</ref> the names of the Red Cross & Red Crescent, as well as the name of and common terms associated with the International Olympic Committee are reserved at the second level across all gTLDs.<ref name="reserved">[https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml#red-cross2 ICANN.org - Reserved Names]</ref> The emblems of the Red Cross & Red Crescent are protected internationally by the 1949 Geneva Conventions and their Additional Protocols.<ref>[https://www.icrc.org/en/copyright-and-terms-use International Red Cross - Copyright]</ref> In addition, the marks and names of the International Olympic Committee are protected by the Nairobi Treaty on the Protection of the Olympic Symbol, national mandates, and traditional trademark registration.<ref>[https://www.wipo.int/wipo_magazine/en/2012/03/article_0003.html WIPO Magazine - The Olympic Properties]</ref>
As part of its Protection of IGO and INGO Identifiers in All gTLDs Policy,<ref name="ingo">[https://www.icann.org/resources/pages/igo-ingo-protection-policy-2020-02-18-en ICANN.org - Protection of IGO & INGO Identifiers in all gTLDs Policy]</ref> the names of the Red Cross & Red Crescent, as well as the name of and common terms associated with the International Olympic Committee are reserved at the second level across all gTLDs.<ref name="reserved">[https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml#red-cross2 ICANN.org - Reserved Names]</ref> The emblems of the Red Cross & Red Crescent are protected internationally by the 1949 Geneva Conventions and their Additional Protocols.<ref>[https://www.icrc.org/en/copyright-and-terms-use International Red Cross - Copyright]</ref> The marks and names of the International Olympic Committee are protected by the Nairobi Treaty on the Protection of the Olympic Symbol, national mandates, and traditional trademark registration.<ref>[https://www.wipo.int/wipo_magazine/en/2012/03/article_0003.html WIPO Magazine - The Olympic Properties]</ref>
In addition, the names and acronyms of many international nongovernmental organizations were subject to a claims notification process across all new gTLDs. <ref name="ingo" /> Attempts to register a domain that matched a label on the INGO identifier list<ref>For a downloadable XML list of INGO identifiers, see [https://www.icann.org/resources/pages/ingo-identifier-list-2018-01-16-en ICANN's INGO Identifier List]</ref> were met with a notice that the registrant may or may not have rights to register the name. Such an attempt also triggered a notification to the INGO in question. The Claims Notification process was designed to assist INGOs in protecting their rights during an initial launch period for registration within a new gTLD. The idea was for registries to conform to a specific "Claim System Specification."<ref name="ingo" /> However, as of March 2021, no Claims System Specification is listed as having been adopted.<ref>[https://www.icann.org/resources/pages/ingo-claims-system-specification-2018-01-16-en]</ref>
In addition, the names of many international nongovernmental organizations were subject to a claims notification process across all new gTLDs.<ref name="ingo" /> Attempts to register a domain that matched a label on the INGO identifier list<ref>For a downloadable XML list of INGO identifiers, see [https://www.icann.org/resources/pages/ingo-identifier-list-2018-01-16-en ICANN's INGO Identifier List]</ref> were met with a notice that the registrant may or may not have rights to register the name. Such an attempt also triggered a notification to the INGO in question. The Claims Notification process was designed to assist INGOs in protecting their rights during an initial launch period for registration within a new gTLD. The idea was for registries to conform to a specific "Claim System Specification."<ref name="ingo" /> The board approved this procedure in 2014, but only for the full names of INGOs.<ref>[https://www.icann.org/resources/board-material/resolutions-2014-04-30-en#2.a ICANN Board Resolution], April 30, 2014</ref> The GNSO did not recommend reserving or protecting the acronyms of INGOs, as no such protection was sought.<ref>[https://www.icann.org/en/groups/board/documents/resolutions-annex-a-30apr14-en.pdf Annex A to the ICANN Board's April 30th, 2014 resolution approving GNSO recommendations (PDF)]</ref>
==Review of Rights Protection Mechanisms==
====[[Trademark Clearinghouse]] (TMCH)====
The [[Trademark Clearinghouse]] was established for owners of registered trademarks to have a single registration procedure for all new gTLDs.<ref name="tmch">[https://newgtlds.icann.org/en/about/trademark-clearinghouse ICANN.org - Trademark Clearinghouse]</ref> Registered marks may be submitted to ICANN for authentication, and in turn that registration information is distributed to all registries and registrars.<ref name="tmch" /> The trademark holders also receive notice when a domain matching the registered mark is registered in any gTLD.<ref name="tmch" />
====[[Trademark Post-Delegation Dispute Resolution Procedure]] (PDDRP)====
The [[Trademark Post-Delegation Dispute Resolution Procedure|PDDRP]] is designed to provide trademark holders (whether those marks are registered or not) to dispute the actions of a [[gTLD]] registry operator.<ref name="pddrp">[https://www.icann.org/resources/pages/pddrp-2014-01-09-en ICANN.org - PDDRP Resources]</ref> The mark holder can challenge the management of a gTLD, or a "bad faith" policy of registering second-level domains within a gTLD. Perhaps because of the stringent evidentiary standard, the relative difficulty of proving a pattern of registry behavior, and the filing costs for such a complaint, the procedure has never been used as of March 2021.<ref>See our [[Trademark Post-Delegation Dispute Resolution Procedure|main article]] for more information</ref>
====[[Uniform Rapid Suspension]] (URS)====
The [[Uniform Rapid Suspension]] process was created to complement the UDRP.<ref name="urs">[https://newgtlds.icann.org/en/applicants/urs ICANN.org - About URS]</ref> The procedure is intended to provide an expedited remedy for trademark holders who can provide "clear and convincing" evidence that a domain was registered and used in bad faith, to the detriment of the trademark holder's rights.<ref name="urs" /><ref name="ursproc">[https://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf ICANN.org - URS Procedure (PDF)]</ref> The URS Procedure was adopted in March 2013.<ref name="urs" />
A successful action must present a ''prima facie''<ref>[https://www.law.cornell.edu/wex/prima_facie Definition of prima facie], Cornell Legal Information Institute</ref> case of infringement in bad faith.<ref name="ursproc" /> Specifically, the complainant must establish: (i) that the registered domain name is identical or confusingly similar to a registered word mark; (ii) that the registrant has no legitimate right or interest to the domain name; and (iii) that the domain was registered and is being used in bad faith. <ref name="ursproc" /> The registrant has a right to respond, but the available defenses and counterclaims are limited by the procedure.<ref name="ursproc" /> A successful complaint causes suspension of the domain.<ref name="ursproc" /> A finding for the registrant does not preclude action under the [[UDRP]] or via other methods. Section 8.6 of the URS Procedures explains:
<blockquote>To restate in another way, if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.<ref name="ursproc" /></blockquote>
==[[PDP Review of All Rights Protection Mechanisms in All gTLDs|GNSO Review of Rights Protection Mechanisms]]==
In 2016, the [[GNSO]] initiated a [[Policy Development Process]] to [[PDP Review of All Rights Protection Mechanisms in All gTLDs|review all of ICANN's rights protection mechanisms]] in all [[gTLDs]].<ref>[https://gnso.icann.org/en/drafts/rpm-charter-15mar16-en.pdf RPM Working Group Charter], March 15, 2016 (PDF)</ref>
In 2016, the [[GNSO]] initiated a [[Policy Development Process]] to [[PDP Review of All Rights Protection Mechanisms in All gTLDs|review all of ICANN's rights protection mechanisms]] in all [[gTLDs]].<ref>[https://gnso.icann.org/en/drafts/rpm-charter-15mar16-en.pdf RPM Working Group Charter], March 15, 2016 (PDF)</ref>
The first phase focused on mechanisms introduced alongside the new gTLD program. The Phase One report of the GNSO was finalized by the Working Group on November 24, 2020.<ref name="pdp">[https://gnso.icann.org/en/group-activities/active/rpm GNSO PDP Hub - Review of RPMs in all gTLDs]</ref> The [[GNSO Council]] approved the final report and its recommendations on January 21, 2021.<ref>[https://gnso.icann.org/en/council/resolutions/2021 GNSO Council Resolutions 2021]</ref> The GNSO presented the report to the [[ICANN Board]] on February 10, 2021.<ref name="pdp" /><ref>[https://gnso.icann.org/en/issues/council-recommendations-rpm-pdp-phase-1-report-10feb21-en.pdf RPM PDP Phase 1 Report], February 10, 2021 (PDF)</ref> A public comment period will occur before board action on the report.<ref name="pdp" />
The first phase focused on mechanisms introduced alongside the new gTLD program. The Phase One report of the GNSO was finalized by the Working Group on November 24, 2020.<ref name="pdp">[https://gnso.icann.org/en/group-activities/active/rpm GNSO PDP Hub - Review of RPMs in all gTLDs]</ref> The [[GNSO Council]] approved the final report and its recommendations on January 21, 2021.<ref>[https://gnso.icann.org/en/council/resolutions/2021 GNSO Council Resolutions 2021]</ref> The GNSO presented the report to the [[ICANN Board]] on February 10, 2021.<ref name="pdp" /><ref name="pdpreport" /> A public comment period will occur before board action on the report.<ref name="pdp" />
The second phase will deal solely with the UDRP.<ref>[https://community.icann.org/display/RARPMRIAGPWG ICANN.org Working Group workspace - RPMs in all gTLDs]</ref>
==References==
==References==
{{reflist}}
{{reflist}}