Rights Protection Mechanisms

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Rights Protection Mechanisms are tools for intellectual property rights enforcement and protection in the DNS.[1] The mechanisms deal primarily with trademark rights, whether registered under the US Patent and Trademark Office or in another forum (such as the EU Intellectual Property Office).

History of Trademark Infringement and Domain Names

Trademark infringement in the domain space can take a variety of forms. Two of the most common are cybersquatting and typosquatting. The history of these tactics reaches back to the earliest days of the Internet.

Pre-Regulation: "Wild Wild West" and Case Law: 1991-1999

In the initial years of the world wide web, comparatively few brands saw the value of registering domains matching their existing trademarks. Cybersquatting became a commonplace term for individuals registering domain names in the names of famous brands, companies, or people. Analogies to "claiming stakes" and the lawlessness of the American frontier were also common.[2][3]

Early case law on the subject occasionally struggled to apply trademark infringement and dilution concepts to the domain space. In Planned Parenthood v. Bucci (March 1997), The U.S. District Court for the Southern District of New York applied a broad view of trademark principles to rule for the plaintiff.[4] Bucci, a Catholic radio personality, had registered "plannedparenthood.com" and was using it to sell his book, which took a pro-life position. The court ruled that his efforts to sell his point of view were sufficiently commercial to create a "likelihood of confusion."[5]

Another case wrangling with the phenomenon of the Internet was Green Products Co. v. Independence Corn By-Products Co. (September 1997). Both companies were in the business of selling corncob by-products. Independence preemptively registered "greenproducts.com." The simple act of registration was enough for the U.S. District Court for the Northern District of Iowa to grant Green Products' summary judgment motion on its dilution claims. The court concluded that there was no harm in enforcing an immediate transfer of the domain, because if Independence prevailed at trial, the court could simply order Green Products to transfer the domain back to Independence.[6]

These cases were representative of an early trend of broadening trademark protections to stop "bad actors" on the cybersquatting side. As Harvard's case law summary from the era reports:

When confronted with such bad faith behavior courts have stretched existing law in order to prevent the cybersquatter from maintaining control over the domain name. Traditional trademark infringement analysis would not have covered many cybersquatting cases. Often cybersquatters register the domain name but do not post a web site under that name. Thus there can be no likelihood of confusion as required for trademark infringement. In such cases, the trademark holder would have to rely on a dilution claim. Additionally, even where a web site has been posted, it often was not commercial and thus seemingly didn't meet the "use in commerce" requirement for both infringement and dilution.

The Ninth Circuit in Panavision v. Toeppen set out a broad interpretation of "use in commerce" that has been followed by subsequent courts. In order to get at cybersquatters, the Ninth Circuit and subsequent courts have held that while mere registration does not constitute use in commerce, the offer to sell the domain name to the trademark holder is sufficient to meet this requirement.

In addition to broadly interpreting the "use in commerce" requirement to tag cybersquatters, courts have found dilution in cases where traditional dilution analysis might not have applied.[4]

ACPA & UDRP: 1999-2000

At the end of 1999, as part of the Intellectual Property and Communications Omnibus Reform Act of 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACCPA). The law amended the Lanham Act to explicitly forbid cybersquatting. ACPA assigns civil liability to any person who:

  1. has a bad faith intent to profit from [a] mark, including a personal name which is protected as a mark under this section; and
  2. registers, traffics in, or uses a domain name that—
    1. in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
    2. in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
    3. is a trademark, word, or name protected by reason of section 706 of title 18, United States Code [names and marks of the Red Cross], or section 220506 of title 36, United States Code names and marks of U.S. Olympics organizations.[7][8]

ACPA codified the Ninth Circuit's decision in Panavision and made the offer to sell a domain to the mark holder sufficient to invoke liability:

As used in this paragraph, the term “traffics in” refers to transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration.[8]

ACPA applied to all domain registrations, past, present, and future. However, statutory damages were only available to plaintiffs in cybersquatting cases where the domain was registered after the effective date of the law.[7]

In the same time frame, the U.S. Department of Commerce drafted the White Paper that led to the creation of ICANN. The white paper also stated the Commerce Department's intention to ask WIPO to study and formulate solutions to trademark issues around domain names.[9] WIPO presented their study to the newly-formed ICANN in April 1999.[10] The board referred the matter to the DNSO for review and recommendations. At ICANN 3 in Santiago, Chile, August 1999, a group of registrars submitted a proposed Model Dispute Resolution Policy.[10] The board instructed ICANN staff to formulate implementation documents, using the model policy as a starting point.[11] After circulation and comment on draft documents, the Uniform Dispute Resolution Policy (UDRP) was adopted by resolution on October 24, 1999.[12] WIPO became the first approved arbiter of UDRP proceedings on November 29, 1999.[10] Additional dispute-resolution service providers followed: the National Arbitration Forum (NAF) in 1999;[13] Disputes.org/eResolution Consortium in 2000 (subsequently transferred to eResolution);[14] and the CPR Institute for Dispute Resolution in 2000.[15][10] Other dispute resolution services have since joined the list of approved arbiters.[16]

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.[16] 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.[17] 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.[17] 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.[17]

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. 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.[18]

International Nongovernmental Organizations (INGO) Claims Notification

As part of its Protection of IGO and INGO Identifiers in All gTLDs Policy,[19] 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.[20] The emblems of the Red Cross & Red Crescent are protected internationally by the 1949 Geneva Conventions and their Additional Protocols.[21] 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.[22]

In addition, the names of many international nongovernmental organizations were subject to a claims notification process across all new gTLDs.[19] Attempts to register a domain that matched a label on the INGO identifier list[23] 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."[19] The board approved this procedure in 2014, but only for the full names of INGOs.[24] The GNSO did not recommend reserving or protecting the acronyms of INGOs, as no such protection was sought.[25]

Trademark Clearinghouse (TMCH)

The Trademark Clearinghouse was established for owners of registered trademarks to have a single registration procedure for all new gTLDs.[26] Registered marks may be submitted to ICANN for authentication, and in turn that registration information is distributed to all registries and registrars.[26] The trademark holders also receive notice when a domain matching the registered mark is registered in any gTLD.[26]

Trademark Post-Delegation Dispute Resolution Procedure (PDDRP)

The PDDRP is designed to provide trademark holders (whether those marks are registered or not) to dispute the actions of a gTLD registry operator.[27] 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.[28]

Uniform Rapid Suspension (URS)

The Uniform Rapid Suspension process was created to complement the UDRP.[29] 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.[29][30] The URS Procedure was adopted in March 2013.[29] A successful action must present a prima facie[31] case of infringement in bad faith.[30] 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. [30] The registrant has a right to respond, but the available defenses and counterclaims are limited by the procedure.[30] A successful complaint causes suspension of the domain.[30] A finding for the registrant does not preclude action under the UDRP or via other methods. Section 8.6 of the URS Procedures explains:

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.[30]

GNSO Review of Rights Protection Mechanisms

In 2016, the GNSO initiated a Policy Development Process to review all of ICANN's rights protection mechanisms in all gTLDs.[32]

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.[33] The GNSO Council approved the final report and its recommendations on January 21, 2021.[34] The GNSO presented the report to the ICANN Board on February 10, 2021.[33][35] A public comment period will occur before board action on the report.[33]

The second phase will deal solely with the UDRP.[36]

References

  1. ICANN.org - Rights Protection Mechanisms and Dispute Resolution
  2. See eg The Virtual Wild Wild West, U. Arkansas Law Review, vol. 4, 1999;
    Get Off My URL: Congress Outlaws Cybersquatting in the Wild West of the Internet, Santa Clara High Technology Law Journal, vol. 17, 2000;
  3. The metaphor returned during the gTLD expansion, as well: Lexology.com - "The wild west of gTLDs and trademarks", July 22, 2014
  4. 4.0 4.1 Harvard Berkman Center - Summaries of Domain Name Case Law
  5. Planned Parenthood v. Bucci - Decision via Harvard's Berkman Center
  6. Green Products Co. v. Independence Corn By-Products Co. - Decision via Harvard's Berkman Center
  7. 7.0 7.1 The ACPA was included in an omnibus appropriations bill, available here (PDF)
  8. 8.0 8.1 HTML version via Cornell Legal Information Institute
  9. US Dept. of Commerce - Management of Internet Names and Addresses, archived on ICANN.org]
  10. 10.0 10.1 10.2 10.3 ICANN.org - Timeline for the Forumulation & Implementation of the UDRP
  11. ICANN Board Resolution 99.81 et seq
  12. ICANN.org - Minutes of Special Meeting, October 24, 1999.
  13. ADRForum.com - UDRP
  14. No longer active - decision archive available at Disputes.org
  15. No longer active - decision archive available at CPRADR.org
  16. 16.0 16.1 ICANN's List of UDRP Service Providers
  17. 17.0 17.1 17.2 UDRP Providers and Uniformity of Process - Status Report, July 2013 (PDF)
  18. ICANN Archive - IRT Final Report, May 29, 2009 (PDF)
  19. 19.0 19.1 19.2 ICANN.org - Protection of IGO & INGO Identifiers in all gTLDs Policy
  20. ICANN.org - Reserved Names
  21. International Red Cross - Copyright
  22. WIPO Magazine - The Olympic Properties
  23. For a downloadable XML list of INGO identifiers, see ICANN's INGO Identifier List
  24. ICANN Board Resolution, April 30, 2014
  25. Annex A to the ICANN Board's April 30th, 2014 resolution approving GNSO recommendations (PDF)
  26. 26.0 26.1 26.2 ICANN.org - Trademark Clearinghouse
  27. ICANN.org - PDDRP Resources
  28. See our main article for more information
  29. 29.0 29.1 29.2 ICANN.org - About URS
  30. 30.0 30.1 30.2 30.3 30.4 30.5 ICANN.org - URS Procedure (PDF)
  31. Definition of prima facie, Cornell Legal Information Institute
  32. RPM Working Group Charter, March 15, 2016 (PDF)
  33. 33.0 33.1 33.2 GNSO PDP Hub - Review of RPMs in all gTLDs
  34. GNSO Council Resolutions 2021
  35. Cite error: Invalid <ref> tag; no text was provided for refs named pdpreport
  36. ICANN.org Working Group workspace - RPMs in all gTLDs