URS to '.travel', puts '.cat' among the pigeons and results in '.pro'(test)
Earlier this year three legacy generic top-level domains (gTLDs) agreed to implement the Uniform Rapid Suspension System (URS) as part of the renewal of their registry agreements. The Internet Corporation for Assigned Names and Numbers (ICANN) came in for criticism amid claims that it had forced the three gTLD registries, ‘.pro’, ‘.travel’ and ‘.cat’, to introduce the URS as part of the contractual negotiations for the renewal of their respective registry agreements. ICANN denied this was the case and insisted that the three registries had voluntarily agreed to include the URS. However, there is now a push to have ICANN reveal the full nature of the negotiations regarding the URS and the renewal of the ‘.pro’, ‘.travel’ and ‘.cat’ registry agreements.
The URS is one of the mandatory rights protection mechanisms that all new gTLD registries must adhere to. The URS is intended to be a faster and cheaper way of dealing with cases of clearly infringing domain name registrations. According to ICANN, the URS "complements the existing Uniform Domain Name Dispute Resolution Policy (UDRP) by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement". It is "not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse". Trademark holders will thus need to turn to the UDRP "where there is any genuine contestable issue as to whether a domain name registration and use of a trademark are in bad faith". As such, the burden of proof in a URS case is much higher than that of the UDRP.
The URS is modelled on the URDP and, in order to succeed under the URS, a complainant will need to prove the following three elements:
The domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
The respondent has no rights or legitimate interests in respect of the domain name; and
The domain name has been registered and is being used in bad faith.
In addition to this, complainants under the URS will also need to provide evidence demonstrating their use of the trademark.
A key difference is that, unlike the UDRP, the URS does not offer the transfer of the domain name to the complainant as a remedy. Instead, should the complaint be successful under the URS, the domain name will actually be suspended by the registry until it expires. Therefore, a complainant seeking to recuperate a domain name may wish to bring a complaint under the UDRP. However, the key to the URS is the rapid element - it is designed to assist trademark holders in getting a domain name and any associated content taken down as quickly as possible and at a lower cost than the UDRP.
The introduction of the URS to the three legacy gTLDs was roundly criticised by some parties when it was first announced because the URS is not an ICANN consensus policy that has undergone the full policy development process with the wider ICANN community. As such, there is a strong feeling from some quarters that ICANN acted inappropriately in allowing the inclusion of the URS in the renewal of the registry agreements for these three gTLDs.
Further to the approval of the new registry agreements by the ICANN board on September 28 2015, three parties have now filed a request for reconsideration (RFR) against the board's actions. The RFR process is one of ICANN's accountability mechanisms as set out in ICANN's bylaws. As set out in Article IV, Section 2 of the ICANN bylaws:
"Any person or entity may submit a request for reconsideration or review of an ICANN action or inaction (‘reconsideration request’) to the extent that he, she or it has been adversely affected by:
a) one or more staff actions or inactions that contradict established ICANN policy(ies); or
b) one or more actions or inactions of the ICANN board that have been taken or refused to be taken without consideration of material information, except where the party submitting the request could have submitted, but did not submit, the information for the board's consideration at the time of action or refusal to act; or
c) one or more actions or inactions of the ICANN board that are taken as a result of the board's reliance on false or inaccurate material information."
The Internet Commerce Association (ICA) filed one RFR while the ICANN Business Constituency and the ICANN Non-Commercial Stakeholders Group filed a joint RFR.
Reviewing both of the RFRs, it appears that there was some cooperation between all three parties in the drafting and submission of the RFRs. Essentially they accuse ICANN staff of attempting to enforce policy from the top down, rather than the accepted ICANN bottom-up, consensus-driven policy creation.
The URS is not an ICANN consensus policy. As it was created specifically for the new gTLD programme, it has not been through a full policy development process which it would need to undergo as part of ICANN's bylaws before it could be considered a consensus policy. The key part of the policy development process is that it is a bottom-up process, driven by ICANN stakeholders via the ICANN supporting organisations which, in the case of gTLD consensus policy, would be conducted by the Generic Names Supporting Organisation.
Both of the RFRs make the point that until the URS is part of ICANN's consensus policies, it should not be used as a negotiation point in the renewal of any of the legacy gTLD registry agreements as this "has the effect of making the URS a de facto consensus policy".
When the news first emerged that the ‘.pro’, ‘.travel’ and ‘.cat’ registry agreements would include the URS, ICANN was pressed to reveal what pressure they had exerted on these three registries to implement the URS. ICANN denied that it had coerced the ‘.travel’, ‘.pro’ and ‘.cat’ registries to include the URS in their new registry agreements. Cyrus Namazi, ICANN vice president of domain name services and industry engagement, stated that ICANN had suggested to these registries that they implement the URS and that they subsequently did so voluntarily.
However, this response does not seem to have satisfied ICANN's critics and both of the recently filed RFRs request that ICANN make a full disclosure of the full renewal negotiations of the three registry agreements in order to demonstrate that the adoption of the URS was indeed a voluntary action on the part of the registry operators and not the result of a one-sided coercion on the part of ICANN staff.
The big fear is that the introduction of the URS to the smaller legacy gTLDs will pave the way for the URS to be implemented under the larger legacy gTLDs, most notably ‘.com’, and will erode the rights of domain name registrants by leaving their domain name portfolios exposed to the URS. However, as mentioned above, the URS will only result in the suspension of a domain name. The domain name will not be transferred to a URS complainant. Of equal importance is the fact that the URS is designed for ‘slam dunk’ cases of trademark infringement. As such, the URS will not enable trademark holders to go on a ‘slash and burn’ exercise through the gTLD name space.
David Taylor and Daniel Madden, Hogan Lovells LLP, Paris
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10