Yesterday I posted on the URS and argued that the format of the complaint should be amended to require a standard form or a significantly reduced word-count limit from the current limit of 5,000 words to 1,000 words. Today, I am going to work through the IRT draft of the URS and the most-recently proposed draft from the DAG volume four to see what sort of time line we might see when the URS goes live.
A number of trademark holders and representatives of trademark holders’ interests contended in the Public Comments to the most-recent DAG that the URS, as proposed in the DAG, is no longer rapid, as it was intended to be. Frederick Felman of MarkMonitor wrote, “[a]s it is currently prescribed, and as analyzed by at least one expert dispute resolution service provider, the URS will be roughly equivalent to the UDRP with respect to time required to adjudicate and therefore is not ‘rapid.’” Nick Wood of Cum Laude asserted that the IRT’s proposal could be completed in 21 days and the DAG proposal could take “up to 47 days,” concluding “an eUDRP can take 35 days – 12 days quicker. URS is no longer rapid.” Eric Wilber, Director of WIPO Arbitration and Mediation Center, contended, among many other concerns, that the time lines for the DAG proposal were “significant.”
According to the URS proposed in the IRT’s final draft, the URS provider has one day to forward the complaint to the relevant registry, the registry has one day to freeze the contact details related to the disputed domain name, and one day from the freeze, the registry notifies the registrant and the registrar of the filing of the complaint. The registrant then has 14 days to answer the complaint. Once the registrant submits an answer or the 14-day answer period expires, a decision is rendered by the URS-provider decision maker. All told, the IRT’s proposed process should not exceed 17 days, although the IRT did not delineate the time necessary for the URS provider to administratively review the complaint for compliance with the policy and rules before the URS provider forwards the compliant complaint to the relevant registry. The IRT’s final draft also does not indicate how much time the decision maker should have to review the filings and issue a decision.
According to the URS proposed in volume four of the DAG, the URS provider has three days to review the complaint for any administrative deficiencies and one day to forward the complaint to the registry. Just as with the IRT final draft, the registry is permitted one day to lock the domain name and one day from the locking of the domain name to forward the complaint to the registrant and the registrar. Under the most-recent DAG, the registrant has 20 days to respond to the complaint. Once a response is submitted or the response period concludes, the decision must be rendered by the decision maker within three days. Therefore, the number of days required to prosecute a complaint under the URS pursuant to the proposal of volume four of the DAG is 29 days.
The time line under the DAG is 12 days longer than the IRT’s URS proposal, but the 29 days include three days for the URS provider to review the complaint for administrative compliance prior to forwarding the complaint to the registry. The most-recent DAG proposal also delineates three days for the decision maker to render its decision. It would appear that the URS provider and the decision maker should be permitted time to administratively review the complaint and to review the filings and render a decision, respectively, and nobody appears to be arguing that three days is too long. So, if we add three days for the URS provider to review the initial complaint and three days for the decision maker to review the filings and render a decision to the IRT’s 17-day proposal, the URS should be limited to 23 days. Therefore, the primary difference between the time line of the IRT proposal and the time line of the DAG proposal is the six additional days allowed for the registrant of the domain name to respond to the complaint.
If the URS proposed by the IRT had outlined the number of days for administrative review and the rendering of the decision, the IRT proposal would have submitted a procedure that should take 23 days, or six days fewer than that proposed in the latest version of the DAG, which does not appear particularly significant. The majority of the concerns for trademark holders are not with the URS time line, but with issues related to the appeal process. I will discuss those issues in the upcoming days in a separate post, because those are significant.
Showing posts with label TLD. Show all posts
Showing posts with label TLD. Show all posts
Thursday, August 5, 2010
Wednesday, August 4, 2010
The URS and the Form of Complaint
A while back I mentioned here that I wanted to post about the dispute resolution policies open for discussion in connection with the introduction of new TLDs. And as I also mentioned below, the comment period for the latest Draft Applicant Guidebook recently came to a close and those comments included many comments related to the various dispute resolution procedures in the fourth version of the DAG. My intent was to write posts about the URS, the Trademark Clearinghouse and both the PDDRP and the RRDRP, but I already have around 1,300 words devoted to the URS and I am only half way through the major issues. So, I plan on breaking this into chunks, starting with the URS. Over the next few days I will be posting about the format of the complaint, the timing inherent to the rules, the standard of review and the procedures for both default and appeal, but first I will discuss the format of the complaint, along with a little background on the URS for color.
The IRT recommended the inclusion of the URS to be a faster and less expensive option than the UDRP for trademark owners. The IRT asserts in its Final Report that “the UDRP has unquestionably been an important and successful mediation tool for trademark owners and domain name registrants alike.” Nevertheless, due to the fact that “brand owners face thousands of infringing websites per year,” those brand owners “spend large amounts of money to build up portfolios of domain names they do not want, simply to prevent fraud on their consumers and misuse of their brands.” The URS contains the same substantive elements of the UDRP, but “the URS is intended to address efficiently and cost-effectively the most clear cut cases of abuse,” and therefore the standard of proof is higher in the URS than the UDRP. Furthermore, the remedies available under the UDRP are either the transfer or the cancellation of the disputed domain name, while the remedy under the URS is only that the domain name is “frozen” for the remainder of the domain name’s registration period, leaving the domain name to resolve to a specific error page.
In light of the stated goal to keep costs associated with the filing of complaints under the URS down, the IRT proposed that the fees should be much lower than those fees associated with the UDRP, and more importantly that the form of complaint should consist of a standard form, complete with check boxes in connection with the various elements of the URS, along with the opportunity to provide a brief explanation with regard to the bad faith element of the policy. The form complaint contains simply the complainant’s contact and trademark registration information, along with the opportunity to insert the disputed domain names in correlation with the relevant trademarks. Check boxes were included in connection with the elements listed under the registrant’s rights to or legitimate interests in the disputed domain name, as well as the four UDRP factors related to bad faith registration and use. And a mandatory comment section is provided in the bad faith registration and use section. As opposed to the form complaint, the DAG proposal in volume four asserts that a complaint “will be simple and as formulaic as possible” and imposes a word-count limit of 5000 words, excluding attachments, which happens to be the same word limit for a UDRP complaint filed with WIPO in accordance with WIPO’s UDRP Supplemental Rules, as well as the word limit under ICANN’s proposed New gTLD Dispute Resolution Procedure, the PDDRP and the RRDRP.
While the reduced fees for the URS speak well for the cost savings for filing complaints, the word limit is of most importance because trademark owners faced with a domain name that infringes its trademark will either need to devote internal resources in the form of in-house counsel to prosecute complaints over domain names or pay legal fees in association with the use of outside counsel, and those fees or opportunity costs are often greater than the filing fees charged by the dispute resolution providers.
Pursuant to the public comment period subsequent to ICANN’s release of the DAG volume 4, a number of trademark owners and organizations representative of trademark owners complained that the latest draft of the URS was no longer as inexpensive as it was designed to be. Nick Wood, Managing Director at Com Laude, questioned the lengthiness of the URS complaint and asked, “who will afford to be a panelist? Will ICANN subsidise URS?” Frederick Felman, Chief Marketing Officer at MarkMonitor, contended that the URS “will not be inexpensive” and posited that “it is likely that the majority of brand holders will be forced to buy a domain name in each gTLD corresponding to their trademarks or will be filing requisite UDRPs as opposed to relying on the equally time consuming and costly URS process.”
Since the original intent of creating the URS was to create a faster and cheaper form of the UDRP, it appears unnecessary for the length of the complaint to be equivalent. Although some have argued that the higher standard of proof in the URS, clear and convincing evidence, rather than the preponderance of the evidence test in the UDRP, will require additional time and resources to prove, I don’t think that argument holds much water since the URS is only intended to provide relief in the “most clear cut cases of abuse.” Moreover, the nature of disputes in connection with the URS will be less complicated than those related to the UDRP, New gTLD DRP, the PDDRP and the RRDRP, and therefore the necessity of 5000 words appears lessened. And finally, in connection with the original intent of the URS to provide relief only in the “most clear-cut cases” of trademark abuse, the form complaint originally proposed by the IRT should be implemented or the word count should be greatly reduced to 1000 words, or approximately the length of this post, which should be more than sufficient to prove the clear cut cases for which the URS was intended to remedy.
The IRT recommended the inclusion of the URS to be a faster and less expensive option than the UDRP for trademark owners. The IRT asserts in its Final Report that “the UDRP has unquestionably been an important and successful mediation tool for trademark owners and domain name registrants alike.” Nevertheless, due to the fact that “brand owners face thousands of infringing websites per year,” those brand owners “spend large amounts of money to build up portfolios of domain names they do not want, simply to prevent fraud on their consumers and misuse of their brands.” The URS contains the same substantive elements of the UDRP, but “the URS is intended to address efficiently and cost-effectively the most clear cut cases of abuse,” and therefore the standard of proof is higher in the URS than the UDRP. Furthermore, the remedies available under the UDRP are either the transfer or the cancellation of the disputed domain name, while the remedy under the URS is only that the domain name is “frozen” for the remainder of the domain name’s registration period, leaving the domain name to resolve to a specific error page.
In light of the stated goal to keep costs associated with the filing of complaints under the URS down, the IRT proposed that the fees should be much lower than those fees associated with the UDRP, and more importantly that the form of complaint should consist of a standard form, complete with check boxes in connection with the various elements of the URS, along with the opportunity to provide a brief explanation with regard to the bad faith element of the policy. The form complaint contains simply the complainant’s contact and trademark registration information, along with the opportunity to insert the disputed domain names in correlation with the relevant trademarks. Check boxes were included in connection with the elements listed under the registrant’s rights to or legitimate interests in the disputed domain name, as well as the four UDRP factors related to bad faith registration and use. And a mandatory comment section is provided in the bad faith registration and use section. As opposed to the form complaint, the DAG proposal in volume four asserts that a complaint “will be simple and as formulaic as possible” and imposes a word-count limit of 5000 words, excluding attachments, which happens to be the same word limit for a UDRP complaint filed with WIPO in accordance with WIPO’s UDRP Supplemental Rules, as well as the word limit under ICANN’s proposed New gTLD Dispute Resolution Procedure, the PDDRP and the RRDRP.
While the reduced fees for the URS speak well for the cost savings for filing complaints, the word limit is of most importance because trademark owners faced with a domain name that infringes its trademark will either need to devote internal resources in the form of in-house counsel to prosecute complaints over domain names or pay legal fees in association with the use of outside counsel, and those fees or opportunity costs are often greater than the filing fees charged by the dispute resolution providers.
Pursuant to the public comment period subsequent to ICANN’s release of the DAG volume 4, a number of trademark owners and organizations representative of trademark owners complained that the latest draft of the URS was no longer as inexpensive as it was designed to be. Nick Wood, Managing Director at Com Laude, questioned the lengthiness of the URS complaint and asked, “who will afford to be a panelist? Will ICANN subsidise URS?” Frederick Felman, Chief Marketing Officer at MarkMonitor, contended that the URS “will not be inexpensive” and posited that “it is likely that the majority of brand holders will be forced to buy a domain name in each gTLD corresponding to their trademarks or will be filing requisite UDRPs as opposed to relying on the equally time consuming and costly URS process.”
Since the original intent of creating the URS was to create a faster and cheaper form of the UDRP, it appears unnecessary for the length of the complaint to be equivalent. Although some have argued that the higher standard of proof in the URS, clear and convincing evidence, rather than the preponderance of the evidence test in the UDRP, will require additional time and resources to prove, I don’t think that argument holds much water since the URS is only intended to provide relief in the “most clear cut cases of abuse.” Moreover, the nature of disputes in connection with the URS will be less complicated than those related to the UDRP, New gTLD DRP, the PDDRP and the RRDRP, and therefore the necessity of 5000 words appears lessened. And finally, in connection with the original intent of the URS to provide relief only in the “most clear-cut cases” of trademark abuse, the form complaint originally proposed by the IRT should be implemented or the word count should be greatly reduced to 1000 words, or approximately the length of this post, which should be more than sufficient to prove the clear cut cases for which the URS was intended to remedy.
Tuesday, June 29, 2010
"Discrete, Limited Rounds?" ICANN's Economic Analysis of New TLDs
Somewhat lost in the coverage of the recent ICANN meeting in Brussels was the release of "An Economic Framework for the Analysis of the Expansion of Generic Top-Level Domain Names" on June 16th, a copy of which is available here.
The first 10 pages, comprising the Introduction and Overview and Background sections, provide a nice overview of how we got to this point and should be mandatory reading for those how are new to the issue. The Theoretical Framework section outlines the pros and cons for the introduction of new TLDs, as well as the Department of Justice's concerns that prompted the Economic Evaluation itself. The next section consists of a survey of studies conducted by Summit Strategies, Minds + Machines, Edelman and Stahura, which makes me feel better personally to know that someone else has waded through these papers.
The final section, however, is the most useful, in the sense that suggestions are made in connection with analyzing the costs and benefits of the implementation of new TLDs. The authors conclude that analysis of domain name registration volumes, domain name resale prices, and the prevalence of domain name registrants switching to new TLDs should all be given low priority. The authors do posit, however, that the increased costs to trademark owners in connection with protecting their brands through domain name registration, monitoring and enforcement should be monitored and analyzed. The authors are also concerned with the costs to consumers due to consumer confusion and fragmentation of the Internet related to new TLDs, although that is obviously not easily measured or monitored.
Finally, the authors propose "it may be wise to continue ICANN's practice of introducing new gTLDs in discrete, limited rounds. It is impossible to predict the costs and benefits of new gTLDs accurately. By proceeding with multiple rounds, the biggest likely costs--consumer confusion and trademark protection--can be evaluated in the earlier rounds to make more accurate predictions about later rounds." That does sound wise and kudos to Michael L. Katz, Gregory L. Rosston and Theresa Sullivan for contributing to the discussion. Nevertheless, when I remotely asked the panel for "Brand Management in the Age of New gTLDs" at the ICANN meeting in Brussels the likelihood of implementing new TLDs in "discrete, limited rounds," the response was mostly chuckles.
The first 10 pages, comprising the Introduction and Overview and Background sections, provide a nice overview of how we got to this point and should be mandatory reading for those how are new to the issue. The Theoretical Framework section outlines the pros and cons for the introduction of new TLDs, as well as the Department of Justice's concerns that prompted the Economic Evaluation itself. The next section consists of a survey of studies conducted by Summit Strategies, Minds + Machines, Edelman and Stahura, which makes me feel better personally to know that someone else has waded through these papers.
The final section, however, is the most useful, in the sense that suggestions are made in connection with analyzing the costs and benefits of the implementation of new TLDs. The authors conclude that analysis of domain name registration volumes, domain name resale prices, and the prevalence of domain name registrants switching to new TLDs should all be given low priority. The authors do posit, however, that the increased costs to trademark owners in connection with protecting their brands through domain name registration, monitoring and enforcement should be monitored and analyzed. The authors are also concerned with the costs to consumers due to consumer confusion and fragmentation of the Internet related to new TLDs, although that is obviously not easily measured or monitored.
Finally, the authors propose "it may be wise to continue ICANN's practice of introducing new gTLDs in discrete, limited rounds. It is impossible to predict the costs and benefits of new gTLDs accurately. By proceeding with multiple rounds, the biggest likely costs--consumer confusion and trademark protection--can be evaluated in the earlier rounds to make more accurate predictions about later rounds." That does sound wise and kudos to Michael L. Katz, Gregory L. Rosston and Theresa Sullivan for contributing to the discussion. Nevertheless, when I remotely asked the panel for "Brand Management in the Age of New gTLDs" at the ICANN meeting in Brussels the likelihood of implementing new TLDs in "discrete, limited rounds," the response was mostly chuckles.
Tuesday, September 15, 2009
Period of Adjustment
This blog is intended to serve trademark owners in connection with the pending introduction of new top-level domains (TLDs). As you may be aware, the Internet Corporation of Assigned Names and Numbers (ICANN) is planning to permit the registration of, potentially, 300 new TLDs, beginning in 2010. A TLD in a domain name consists of the letters to the left of the last dot in a domain name, such as .com, .net and .gov. ICANN's introduction of a host of new TLDs could possibly include generic terms (.food, .sport), trademark terms (.deloitte) or geographic terms (.nyc, .berlin).
Trademark owners are likely already well aware of the challenges related to the easy registration of domain names that may include terms identical or confusingly similar to their mark. These challenges are only going to increase, but that should not mean trademark owners feel overwhelmed. Trademark owners will, however, need timely and accurate information related to the process, as well as the aftermath.
There is no shortage of content on the Internet related to the introduction of new TLDs, but the information dedicated specifically to the unique challenges of trademark owners is less robust. Hopefully, this blog will serve to keep trademark owners abreast during this period of adjustment.
Trademark owners are likely already well aware of the challenges related to the easy registration of domain names that may include terms identical or confusingly similar to their mark. These challenges are only going to increase, but that should not mean trademark owners feel overwhelmed. Trademark owners will, however, need timely and accurate information related to the process, as well as the aftermath.
There is no shortage of content on the Internet related to the introduction of new TLDs, but the information dedicated specifically to the unique challenges of trademark owners is less robust. Hopefully, this blog will serve to keep trademark owners abreast during this period of adjustment.
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