Purpose: This Public Comment proceeding seeks to obtain community input prior to the Board action on the Phase 1 final recommendations of the GNSO Review of All Rights Protection Mechanisms (RPMs) in All gTLDs Policy Development Process (PDP).
Current Status: The GNSO Council approved the Phase 1 final recommendations of this PDP during its meeting on 21 January 2021. As required by ICANN Bylaws Article 3.6.a.(i), 21-day public notice is hereby provided on the policies that are considered for adoption prior to any action by the ICANN Board.
Next Steps: The ICANN Board is expected to take action on the GNSO Council approved Phase 1 final recommendations in accordance with the ICANN Bylaws.
Section I: Description and Explanation
At its meeting on 21 January 2021, the Generic Names Supporting Organization (GNSO) Council voted to approve by a Supermajority all recommendations contained in the Phase 1 Final Report from the Review of All Rights Protection Mechanisms (RPMs) in All gTLDs Policy Development Process (PDP) Working Group. The GNSO's adopted recommendations have been sent to the ICANN Board for its review. In line with the ICANN Bylaws, this Public Comment forum is being opened so that the community has a reasonable opportunity to comment on the adopted recommendations prior to Board action.
The Final report contains thirty-five (35) recommendations addressing the RPMs and associated structures and procedures applicable to gTLDs launched under the 2012 New gTLD Program, specifically:
- The Uniform Rapid Suspension System (URS);
- The Trademark Clearinghouse (TMCH);
- The Sunrise and Trademark Claims services offered through the TMCH; and
- The Trademark Post-Delegation Dispute Resolution Procedure (TM-PDDRP).
The Working Group has classified its recommendations for each of the Phase 1 RPMs into three categories:
- Recommendations for new policies or procedures – a total number of fifteen (15) recommendations
- Recommendations to modify existing operational practice – a total number of ten (10) recommendations; and
- Recommendations to maintain the status quo (i.e. as the Phase 1 RPMs were implemented for the 2012 New gTLD Program) – a total number of nine (9) recommendations.
As the Working Group experienced difficulties in obtaining quantitative data concerning the effectiveness of the Phase 1 RPMs, it also put forward an Overarching Data Collection Final Recommendation aimed at addressing this data-related gap.
Among the thirty-five (35) Phase 1 final recommendations, the Working Group reached full consensus on thirty-four (34) recommendations and consensus on one (1) recommendation, which was the TMCH Final Recommendation #1. A Minority Statement was jointly filed by seven (7) members of the Working Group with regard to the TMCH Final Recommendation #1, which can be found in Annex D of the Final Report. It is important to note that the Minority Statement did not oppose the primary thrust of the recommendation, but noted concerns over the scope of "word marks" that can be accepted into the TMCH.
The policy recommendations, if approved by the Board, will impose obligations on contracted parties, as well as service providers with respect to the TMCH, URS, and TM-PDDRP. Under the ICANN Bylaws Section 11.3(i)(x), the GNSO Council's Supermajority support for these recommendations obligates the Board to adopt the recommendations unless, by a vote of more than two-thirds, the Board determines that the policy is not in the best interests of the ICANN community or ICANN.
Section II: Background
The question of who legally has rights to, or is the legitimate holder of, a domain name can be open to dispute. Since the Internet is a global resource and domain name holders are dispersed among numerous different jurisdictions, finding an effective, enforceable and reliable process to resolve rights disputes across various jurisdictions is not an easy undertaking.
Over time, ICANN has developed a number of dispute resolution policies and procedures that attempt to address this issue and provide enforceable remedies for certain types of disputes concerning domain name registrations. These policies are essentially alternative dispute resolution procedures to court litigation that nevertheless do not preclude the initiation of legal proceedings in the appropriate jurisdiction.
In relation to domain name disputes concerning the registration and use of legally protected trademarks, the Uniform Dispute Resolution Policy (UDRP) is the longest standing alternative dispute resolution procedure, which has been an ICANN Consensus Policy since 1999.
As a result of the 2012 New gTLD Program, several new rights protection mechanisms (RPMs) were also developed to mitigate potential risks and costs to trademark rights holders that could arise in the expansion of the new gTLD namespace, and to help create efficiencies for registration service providers among gTLD launches. These new mechanisms are the URS, the TMCH and the associated availability through the TMCH of Sunrise Periods and the Trademark Claims Service, and the TM-PDDRP.
Prior to the launch of the New gTLD Program, on 3 October 2011 ICANN staff had published a Final Issue Report on the current state of the UDRP. The recommended course of action in that UDRP Report was not to initiate a Policy Development Process (PDP) at the time, but to hold off launching any such PDP until after the new URS had been in operation for at least eighteen (18) months.
Subsequently, on 15 December 2011, the GNSO Council requested that ICANN staff prepare and publish a new Issue Report on the state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to the UDRP and URS. As a result of that GNSO Council request, the Final Issue Report on a PDP to Review All RPMs in All gTLDs was published on 11 January 2016.
On 18 February 2016, the GNSO Council voted to initiate the PDP on the Review of All Rights Protection Mechanisms (RPMs) in All gTLDs. On 15 March 2016, the GNSO Council approved the PDP Charter for the review to be conducted in two phases. Phase 1 focuses on reviewing all the RPMs and associated structures and procedures applicable to gTLDs launched under the 2012 New gTLD Program. Phase 2 will focus on reviewing the Uniform Dispute Resolution Policy (UDRP), which has been an ICANN Consensus Policy since 1999. On 21 April 2016, the Working Group held its first meeting to commence its Phase 1 work and has been meeting regularly since that time.
The Working Group's Charter, as approved by the GNSO Council, maps out the deliverables expected in each phase of work and notes the need for the Working Group to track and if appropriate, coordinate its work with other relevant efforts underway. Under this Charter requirement, the Working Group took into consideration the outcome of these efforts, including the TMCH Independent Review, the Competition, Consumer Trust and Consumer Choice Review (CCT), the Expedited PDP (EPDP) on the Temporary Specification for gTLD Registration Data, and the New gTLD Subsequent Procedures (SubPro) PDP. The Charter also includes several general, overarching questions as well as a number of additional questions that the Working Group is expected to address at the conclusion of Phase 1 or Phase 2 of its work, as appropriate.
As this PDP is the first time that the RPMs have been subject to a policy review by the ICANN community, there were no comprehensive studies or data collected that measured their effectiveness. The Working Group agreed early on in its work that, in order to fulfill its Charter requirements and effectively review each of the Phase 1 RPMs, it would need to analyze any available data (including data reported by Registry Operators and the various service providers to ICANN org) as well as gather and examine new data that had not been available to date. Accordingly, the Working Group collected and analyzed new data and input from a number of sources via surveys to various stakeholders, interactions with service providers, analysis conducted by third parties, and other methods.
As mandated by the GNSO's PDP Manual, the Working Group published its Phase 1 Initial Report for Public Comment on 18 March 2020. The Working Group used a Google Form to collect public comments. Fifty-five (55) contributions were received (38 from organizations, five from ICANN community groups, and 12 from individuals).
To facilitate its review and analysis of the public comments received, the Working Group used a set of Public Comment review tools and analysis summary documents (see here). From May to September 2020, the Working Group completed its review and assessment of the public comments received through online review, sub group processes, and plenary sessions. As documented in its Phase 1 Final Report, the Working Group agreed to amend some of its preliminary recommendations and include additional recommendations as a result of its review of the input received through the Public Comment Forum.
The Working Group's Phase 1 Final Report was submitted to the GNSO Council on 24 November 2020. Prior to the GNSO Council's vote in January 2021, the GNSO Council discussed the Working Group's recommendations on several occasions, including at a webinar conducted on 11 January 2021 and during the GNSO Council's meeting on 17 December 2020.
On 11 January 2021, John McElwaine, the GNSO Council Liaison to the RPM PDP, submitted a motion to approve the Phase 1 Final Report to the GNSO Council mailing list. The GNSO Council passed the resolution via a unanimous vote during its meeting on 21 January 2021. For additional details, see the transcript and the minutes from the GNSO Council's January 2021 meeting.