legal Duplicitous ICANN Working Group Jeopardizes Domain Owners’ Rights

[GeorgeK]

A duplicitous ICANN Working Group has issued a report that is open for public comments that would have severe negative consequences for domain name owners. In particular, it would tilt the playing field in a domain name dispute (i.e. a UDRP or the URS) involving IGOs (intergovernmental organizations like the United Nations) in such a manner that it would be nearly impossible for domain owners to have their dispute decided on the merits by the courts. This would encourage consequence-free reverse domain name hijacking. Rather than accept the findings and recommendations of the prior working group, which reached a consensus, this new working group instead had tunnel vision and focused instead on ramming through an alternative recommendation (involving arbitration) for which there was an express consensus against in the prior working group!

The current deadline for comments (unless extended) is October 24, 2021.

Read more about this dangerous report and what you can do to stop its recommendations in my blog post at:

https://freespeech.com/2021/10/12/duplicitous-icann-working-group-jeopardizes-domain-owners-rights/

 

[GeorgeK]

I can't quite understand the obvious consequences of the content of this proposal.
But this Requesters: Generic Names Supporting Organization let me understand that someone is come to rob the jewels, though my pockets are full of stones.

Right now, if someone creates a dispute involving one of your domain names, and you lose the UDRP/URS, you have the fundamental right to have that dispute decided on its merits in the court system. With this proposal, they'll take that right away from you, starting with a special class of complainants (IGOs, e.g. the UN, WHO, World Bank, and organizations of that type). They'd replace the court access with arbitration.

This reduction in rights might seem at first glance to be small, but it's only the existence of court action that creates checks and balances for the UDRP/URS. Egregious decisions like the ADO.com case would become more common, and would not be able to be properly reversed in the courts if these kinds of proposals are adopted (since the courts would no longer be involved). It would lead to more reverse domain name hijacking attempts, and even more successful attempts to take away domains that are rightfully the property of the current domain name owners!

The entire UDRP policy is being reviewed for the first time ever very shortly (starting in the next few months), so you can be sure that if they got away with a proposal like this for IGOs, they'll be trying to get away with even more anti-registrant proposals for all complainants. If you don't defend your rights, they'll be happy to take them away from you.

 

[GeorgeK]

they are either very stupid OR some people are going to make so much money from it very soon

That's not an "either" / "or" --- it's more like BOTH when it comes to ICANN.

 

[GeorgeK]

Given GoDaddy's huge investment in domain names via NameFind, I hope they realize that this proposal is an attack on those ownership rights. To defend their investment, they should oppose this proposal.

I hate cybersquatters! We're not asking to protect those bad guys, only to create a level playing field so that the reverse domain name hijackers don't get away with their attempts to steal our assets. Access to the courts is a fundamental right, one that protects us against injustices like the ADO.com decision.

 

[eternaldomains]

First of all, thanks to @Eric Lyon or whomever the actual mod is who put up the banner. Just one thing: Is it possible to change the banner color to something like red to bring more attention to such super important matters?

 

[GeorgeK]

Take a look at the ICANN "reserved list" to see the kinds of valuable domains and strings that they can target:

https://www.icann.org/sites/default/files/packages/reserved-names/ReservedNames.xml

e.g. acs, au, can, ec, eco, ep, ico, idea, iso, pam, sco and many more.

Plus, this working group is trying to expand the eligible list of "IGOs" beyond that reserved list.

Since these are international treaty organizations, a new IGO called "SEX" can be created at-will between any 2 governments, e.g. maybe Tuvalu (.tv) and Cocos Islands (.cc) have their cash-strapped governments sign a treaty for establishing "Society Exchange". That new IGO might then target desirable strings to improve upon the sex.int domain (remember, there's an entire TLD created specifically for those types of organizations, at .int!).

Or perhaps a free speech site appears to write about the sexual abuse scandal of the World Health Organization:

https://www.reuters.com/world/afric...into-congo-sexual-abuse-diplomats-2021-10-13/
https://www.nbcnews.com/news/world/...ees-took-part-congo-sex-abuse-during-n1280315
https://www.npr.org/sections/goatsa...staff-perpetrated-harrowing-sexual-abuse-in-c

If that free speech site was of the form "WHOSexScandal.TLD" or "WorldHealthOrganizationSucks.TLD", etc., anything incorporating the IGO's name, then the IGO can get a free shot at shutting down legitimate free speech. If they get the right panelist (many of whom don't ascribe to American values such as free speech), then they can win that domain!

https://www.wipo.int/amc/en/domains/search/overview3.0/

2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.

So, different results depending which panelist you get!

 

[GeorgeK]

is this all about trademark words ? i dont understand the full list

The UDRP & URS are trademark dispute resolution mechanisms for domain names. They don't need to be registered TMs, though --- a complainant can have "common law" unregistered TMs. IGOs typically do not register TMs corresponding to their names and/or acronyms with national trademark offices, but might be considered to have unregistered TMs in those terms in many cases.

Many IGOs register their names/acronyms in the "Article 6ter" database, see:

https://www.wipo.int/article6ter/en/

which is used by national trademark offices to block other terms from becoming registered, if they would be confusing. It's not an automatic block, as an identical or similar mark can be registered if it's not confusing.

e.g. "PAM" is in the Article 6ter database, for the World Food Programme. It can be seen as an 8900-series listing in the USPTO database:

https://tsdr.uspto.gov/#caseNumber=89000806&caseType=SERIAL_NO&searchType=statusSearch

(but it's not considered a registered TM -- it's just there to note the "blocking right")

But, there are numerous US registered TMs that were not blocked by that World Food Programme entry, see:

https://tsdr.uspto.gov/#caseNumber=72232915&caseType=SERIAL_NO&searchType=statusSearch [the cooking spray]

https://tsdr.uspto.gov/#caseNumber=85163866&caseType=SERIAL_NO&searchType=statusSearch [computer services for optometry]

etc.

The text of the Article 6ter treaty can be read at:

https://www.wipo.int/article6ter/en/legal_texts/article_6ter.html

Note the portion in 1(c):

The countries of the Union shall not be required to apply the said provisions when the use or registration referred to in subparagraph (a), above, is not of such a nature as to suggest to the public that a connection exists between the organization concerned and the armorial bearings, flags, emblems, abbreviations, and names, or if such use or registration is probably not of such a nature as to mislead the public as to the existence of a connection between the user and the organization.

In the original working group that I was on (for 4 years!), we came to the recommendation that there be a "policy guidance" issued for UDRP/URS panelists to be aware of this (but not to modify the UDRP). This was recommendation #2 in the report (bottom of page 4):

https://gnso.icann.org/sites/defaul...ch/igo-ingo-crp-access-final-17jul18-en_0.pdf

Recommendation #2:
The Working Group notes that an IGO may seek to demonstrate that it has the
requisite standing to file a complaint under the UDRP or URS by showing that it has
complied with the requisite communication and notification procedure in accordance
with Article 6ter of the Paris Convention for the Protection of Industrial Property1
. An IGO may consider this to be an option where it does not have a registered trademark
or service mark in its name and/or acronym but believes it has certain unregistered
trademark or service mark rights for which it must adduce factual evidence to show
that it nevertheless has substantive legal rights in the name and/or acronym in
question. In this regard, the Working Group recommends that specific Policy Guidance
on this topic be issued by ICANN to clarify the following points:
(a) this alternative mechanism for standing is not needed in a situation where
an IGO already holds trademark or service mark rights in its name and/or
acronym, as the IGO would in such a case proceed in the same way as a nonIGO trademark owner; (b) whether or not compliance with Article 6ter will be considered determinative of standing is a decision to be made by the UDRP or URS panelist(s) based on the facts of each case; and (c) the possibility that an IGO may seek to rely on its compliance with Article 6ter to demonstrate standing should not modify or affect any of the existing grounds which UDRP and/or URS panelists have previously found sufficient for IGO standing (e.g. based on statutes and treaties).

This was a reasonable way to balance things, that Article 6ter registration did not automatically confer TM rights, but it is fact-specific, and given the appropriate facts might (if an IGO has used the term widely, etc.) rise to give them standing.

As you can see, we thought about all these issues quite carefully and deeply. But, the ICANN insiders pretend that we didn't do our homework, that we were somehow "rogue elements", when in fact it is they that want to trample upon the legitimate fundamental rights of domain name owners through their unbalanced and one-sided recommendations. They want to throw domain owners under the bus.

 

[Future Sensors]

Thanks for the heads up @GeorgeK, will have a look at this. Tagging @Paul Nicks here as well, as one of ICA's Board members.

 

[GeorgeK]

FYI: Chris Disspain of Donuts, the chair of the working group, responded and he refused to extend the deadline for comments (despite numerous other ICANN comment periods being extended historically). e.g. search for "public comments" extended:

https://www.google.com/search?q=site:icann.org+extended+"public+comments"

10 days left.

While I escalated to the Complaints Office (adding to my existing complaint from April, which they still never responded to), it wouldn't hurt if more people demanded more time to study the issues in order to submit meaningful public comments.

I can't do things alone, folks. It only takes a few minutes to help yourself (and others like myself are investing dozens of hours on this, on top of the thousands of hours in the past, to help all domain name owners). The other side wants you to simply "give up", so that they can get their way. Never give up!

 

[GeorgeK]

Same here, do not register trademarked names and you are going to be fine. Since 2006 when I started domaining, i Never had a udrp case.

Nearly every dictionary word, and most acronyms have an associated registered TM somewhere in the world (plus there are common law marks, too, that are unregistered). Unless you have a completely garbage portfolio, there is somebody out there that covets a domain name you own. If they feel an entitlement to it, they might misuse the UDRP/URS, and you could lose your asset without the full recourse available to reverse that unjust outcome. Look at what happened to Francois with ADO.com, or other cases like that, where it was an obvious case of a bad panel decision.

If bad panel decisions can't be reversed, that would lead to a great injustice (and arbitration isn't the 'answer', as that that could still lead to bad decisions; remember, ADO.com had 3 experienced panelists, i.e. the "best" roster!).

Furthermore, if panelists know that their decisions can't be reversed by courts, that they're the final say, that's when the most mischief can take place (i.e. I biased panelist can be left unchecked, with no safeguards to correct a biased decision).

Looking at your own portfolio (via the DAN.com link in your signature), [redacted, a 3-letter domain].xyz is a holding, yet "[redacted]" has registered TMs, e.g. search at:

https://www.tmdn.org/tmview/#/tmview

(change "CONTAINS" to "IS", and do a search for [redacted].

[change the status to only look at registered and filed ones, to exclude the dead ones, and there are 25 matches]

[one can also check at the USPTO website, but that's only US registered TMs]

 

[GeorgeK]

So in 10 pages you wrote here you said that basically if you have not been through an UDRP, you have a sh*t portfolio...

Wow... Just wow

No, that's not what I said. I said nearly every word and acronym has either a registered TM in some country, and even unregistered (common law) TM rights exist. Thus, there is very likely to be somebody out there that covets those kinds of domain names, and might misuse the UDRP/URS accordingly. Go do a TM search for the term corresponding to your best names, and you'll see for yourself.

 

[GeorgeK]

FYI, ICANN just responded to my open letter to them of mid-October re: IGO protections (and I immediately replied):

https://freespeech.com/2021/12/09/icann-responds-to-my-open-letter-regarding-igo-protections/

 

[GeorgeK]

As I noted on Twitter:

https://twitter.com/x/status/1524743084533243905

the ICANN GNSO Council will be voting on the flawed final report next week (May 19, 2022). I hope that those here who have some sway (e.g. GoDaddy and other registrars) will oppose that working group's final report, as the working group ignored the public comments opposed to it, including those that noted that the recommendations went far beyond the actual charter. Registrants will be directly harmed, as their due process protections via court will be eliminated! When that happens, you can expect IGOs to take advantage of the situation and engage in reverse domain name hijacking attempts, as an incorrect decision wouldn't be able to be corrected by the courts.

As we've seen in the ADO.com UDRP and similar decisions, panelists are biased against domain name owners, and this will become even worse if they know that their decisions can't be challenged in the courts.

 

[Kai W.]

I can't quite understand the obvious consequences of the content of this proposal.
But this Requesters: Generic Names Supporting Organization let me understand that someone is come to rob the jewels, though my pockets are full of stones.

 

[GeorgeK]

P.S. One of the terms on the reserved list is "Las" --- maybe the $90 million LasVegas.com domain name is worth taking a free shot at, if it can't be appealed to the courts, and you get "the right panelists".

https://www.thedomains.com/2015/11/...gas-com-in-2005-for-up-to-90-million-dollars/

(e.g. maybe the same kinds of panelists Francois got for the ADO.com case!)

 

[GeorgeK]

Only 10 days left to comment, folks:

https://www.icann.org/en/public-com...c-curative-rights-protections-igos-14-09-2021

(which also has the email for the policy staff; highly recommend reaching out to them to demand more time to research the issues, if 11 days isn't enough time to get up to speed)

You'll note only 2 comment submissions have been made:

https://www.icann.org/en/public-com...2021/submissions?page=1&sort-direction=newest

with 1 explicitly against, and 1 asking for more time:

https://www.icann.org/en/public-com...9-2021/submissions/rodenbaugh-mike-13-10-2021

I would like to have more time to understand and consider the implications of this report, well beyond the standard 40 days. I note these issues have been discussed for many years, so I do not understand the urgency or the stealthiness behind this work. At first glance at least, it appears to disregard the output of a duly formed GNSO Working Group tasked with the same policy development, in which I participated. At minimum, I would have expected this EPDP team to have consulted with the members of that Working Group before publishing a report that varies so drastically with the prior output.

I would like to have more time to understand and consider the implications of this report.

If they enact these horrible amendments, your rights to due process will be diminished. This isn't about tilting the rules in favour of domain name owners --- we're not protecting the bad guys. Bad guys and criminals would lose in court. This is about protecting people's rights to access the courts, have their cases decided on the merits in the courts, so that they don't face the injustices seen by Francois with the ADO.com decision at WIPO, and similar travesties.

Remember what happened with France.com? The French government is fighting hard to assert their immunity in the US courts, to ensure that the prior owner can't have their property returned to them. IGOs are creations of governments. Do you think that if this proposal goes through to benefit IGOs, that they'll stop there? Heck no! The next step would be to give governments the same kind of immunity. So, perhaps the Iranian government would go after a domain name owned by a person in the UK or Japan. Or the Italian government would go after a domain name owned by a person in the USA. And if given immunity, the domain owner wouldn't be able to appeal to their national courts.

And then the next step would be to take away court access for appeals when it's just a regular TM holder. This is already the case in the UK, folks!

https://circleid.com/posts/20180103_the_udrp_and_judicial_review

You'll note my proposals (in the RPM PDP, and made separately in the IGO PDP) fixes the problem for both the UK-affected registrants, and the IGO issue. [because the root cause for both issues is the same, and I attacked the root cause, not the symptoms]

If you have a domain name at a UK-based registrar, and you are based in the UK yourself, you're basically screwed if you get an unjust adverse ruling in the UDRP/URS, because you're most likely not even able to appeal to the courts (unless a brand new precedent is set at a higher court, that reverses the current situation).

 

[GeorgeK]

Example of the "quality work", by those who who pretended they read their report. P. 21, footnote 20:

https://itp.cdn.icann.org/en/files/...tive-rights-protections-igo-14-09-2021-en.pdf

"See [INSERT RELEVANT EARLY GOOGLE DOC] for details..." ​

I might be the very first person in the world to have actually read this report.

Remember, there were a lot of working group members and paid ICANN staff, who claimed to actually do the work, to read what they submitted to the public. Why didn't they see what I spotted? (and there were other errors)

 

[eternaldomains]

[[[Reposting here]]]

For those who believe that comments are useless, see the attachment on this post here https://www.namepros.com/threads/th...it-about-control.1167444/page-10#post-7686998 , an important hint on how we won the battle to stop the sale of .org.

It may look like it's just the Californian Attorney General & the State having an actual effect on ICANN, but without the people doing the mass-protesting, the C-AG & the State wouldn't have made a move.

The people did the mass-protesting BECAUSE they were pissed off by ICANN choosing to ignore their comments.

And ICANN chose to ignore their comments BECAUSE THERE WERE OPPOSING COMMENTS IN THE FIRST PLACE.

============================================================
To summarize, in order to win any battle against ICANN, this is the order of things we need to achieve:

Comment to ICANN >>> Raise awareness to as many end users (8000-25000 minimum) >>> ICANN disregards opposing comments >>> Stage mass protest >>> Get news coverage >>> Attorney General sees and takes action
============================================================

So go to https://www.icann.org/en/public-com...c-curative-rights-protections-igos-14-09-2021 and help yourselves already FFS!

 

[AboGamil]

is this all about trademark words ? i dont understand the full list

 

[Steven McEvoy]

Am I missing something I don’t see what the problem here is?

specially trademark names

 

[GeorgeK]

I made a new blog post today, to respond to the GAC and IGOs which have been overstating the nature of the IGO protections:

https://freespeech.com/2021/10/14/an-open-letter-to-the-icann-board-regarding-igo-protections/

 

[GeorgeK]

ICANN is already in collusion with the big registrars, they are not allowed portfolios and lose their accreditation according to ICANN materials and rules. However we all know it's considered normal but why?
18 cents per reg per year.

That's not correct. There was never any policy passed preventing registrars from owning portfolios. I suspect you're misunderstanding the portion of the registrars contract with ICANN which says:

https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en

3.7.9 Registrar shall abide by any Consensus Policy prohibiting or restricting warehousing of or speculation in domain names by registrars.

But, no such "Consensus Policy" was ever proposed, nor would it likely ever get adopted. The list of all Consensus Policies can be found at:

https://www.icann.org/resources/pages/registrars/consensus-policies-en

 

[DomainNature]

I will try to comment tomorrow on ICANN, need to look more into this matter.
I m going to share this topic to the other forum if no one did yet to spread the word.
Thank you for info!

 

[GeorgeK]

What of the flipside to this, where as the domain investor we win the dispute, and the complainant now cannot also bring the case to court, thereby potentially saving the domain defendant thousands $ in additional costs? Could this be considered somewhat of a positive outcome to the proposal, or do outcomes like this simply not occur? Eg., this will always swing in favor of IGOs..

No trademark owner or rightsholder who loses a domain dispute (UDRP or URS) is ever prevented from going to court. These current proposals wouldn't change those legal rights for them, only diminish your rights as a domain name owner.

As I noted last night on Twitter (as I went through the transcripts of their past working group calls), they knew there'd be blowback and opposition. That's why they did very little in terms of public outreach to affected stakeholders, to try to sneak this through unnoticed.

IGO call of Aug 2, 2021, page 10, by Chris Disspain (the chair of the working group):


https://gnso.icann.org/sites/defaul...nscript/transcript-gnso-igo-wt-02aug21-en.pdf

"One of the things that I’m personally very concerned about is the response we’re going to get from this when we go out for public comment. "

July 26, 2021 call, page 34, Chris Disspain again:

https://gnso.icann.org/sites/defaul...anscript/transcript-gnso-igo-wt-26Jul.en_.pdf

“We are asking the registrant community to agree some significant changes to the way that the UDRP operates specifically for the purposes of allowing IGOs to use that mechanism.”

Where's the outreach to the "registrant community"? Did you know about it before I blogged about it? (and of course, as I blogged, IGOs have already used that mechanism successfully, so changes aren't needed, especially changes that jeopardize our legal rights)

 

[GeorgeK]

Only 4 public comments and one is neutral. I'm actually concerned this could have legs. Or get pushed through.

If you have concerns, posting on this message board won't change anything. Create an account at ICANN, and let them know your concerns, and/or ask for more time to study the issues. It takes just a few minutes.

Folks who read this thread can never say "I wasn't warned about this", if they later are negatively impacted. The question is, are you just going to do nothing, or will you do something? The folks at ICANN have "trained" people to expect that their comments will be ignored, and that they shouldn't bother to speak up. But, if you give in to that kind of thinking, then they win!

Remember, if you say nothing at all, they interpret that as "ICANN is on the right track!"

That really speaks to how things are messed up. The standard should be that: if you want to make a drastic change, you need to have lots of vocal support from the public and affected stakeholders for it.

They instead rely upon folks being kept in the dark, so they can sneak through horrible policies, as we've seen repeatedly throughout their history.