On a quite Sunday, you should spent a few minutes and check 2 posts this week by the Internet Commerence Association (ICA).

As a frequent reader to this blog, you should know due to the roll out of the new gTLD’s there is a ton of activity going on with ICANN and many parties are weighing in.

You should also know that because all registries what to be treated the same under ICANN rules, any rules and regulations ICANN imposes for the new gTLD operators will wind up being the rules and regs that existing registries including VeriSign.

The first post by the ICA this week covers the some of the proposals floating around to curtail “trademark” infringing domains, changes in the UDRP, placing responsibility on Registrars to prevent domain registrations that infringe on trademarks and the ICA Policy on this.

The Post states in part:

“””””•    ICANN could establish an “IP Registry” of sanctioned names that could then be restricted to their “owners”. Brand holders would bear the burden of proof, according to ICANN-defined procedures, of establishing their ownership of a brand name.

•    ICANN could establish a “loser pays” policy for the UDRP, where the losing party would pay the litigation costs of the prevailing rights holder. This would provide an incentive for applicants to make sure that they weren’t infringing on a trademark or copyrighted name, or at least quickly to relinquish their claim on a name when the legitimate owner made a complaint.

•    ICANN could place the responsibility on the registrars to enforce these property rights and the liability to pay rights holders’ costs associated with infringement. Registrars may be in the best position to perform this policing function.

The ICA has major concerns about such proposals, and believes that any major revamp of rights protections at the second level of the DNS should be considered carefully and on their own merits, and should not be a negotiating chip in the new gTLD rules debate.

The Internet is a global medium and there are few truly global brand names, and even then they only cover a specific relevant marketplace. Despite any assurances that some reasonable burden of proof will be placed upon brand holders, an IP Registry is likely to quickly resemble a large multilingual dictionary encompassing brands that are less than global, generic words used as brands, and  typographical variations of all of these  out to and beyond six degrees of separation.

A “loser pays” regime for the UDRP could well exacerbate reverse domain name hijacking cases brought by large multinational firms using law firms billing $600 per hour against domainers who believe they acted in good faith but can barely afford their own legal costs, much less pay the Fortune 500’s.

And that is not the only UDRP change sought by TPI – it also advocates “establishing a quick and low-cost way for established trademark holders to protect their intellectual property and prevent cybersquatting and other nuisance registrations on new registries”, but provides no details of what that might be. The UDRP is coming up on its 10th anniversary, and probably deserves a long and thorough review that incorporates the views and legitimate interests of both trademark owners and registrants with the aim of recommending balanced consensus recommendations for reform — and that is entirely separate from the new gTLD uproar.

Also, while registrars may at first find the notion of running ICANN in tandem with registries to be attractive, making them responsible for policing trademark rights, and financially liable to trademark interests, could quickly douse any enthusiasm.

Elsewhere, the Report suggests that Google, Yahoo, and other search engines “are likely to feel competitive pressures from users to guide users to a company’s correct website and not a bogus site”, so TPI apparently feels that they should jigger their algorithms to factor in brand owners.

The fundamental analytic flaw in the TPI report and recommendations is its willful blindness regarding the interests of the true users of the DNS — also known as those who pay the fees that are subsequently upstreamed to ICANN via the registrars and registries after they take their cut for services rendered – that is, the registrants, including domainers who invest in and develop domain portfolios. Contrary to the report’s view that registries and registrars are ICANN’s “direct users”, they should more properly be thought of as its authorized agents. The true users of the DNS are registrants of all stripes, as it is their registration fees that find their way to ICANN and constitute more than ninety percent of the organization’s income. The only registrants referred to in this report are “cybersquatters” and others that TPI regards as nuisances. Its plan translates into nothing less than “Taxation Without Representation” for registrants, as well as a dramatic erosion of due process rights in the UDRP.””

I urge you to read the complete blog post on the ICA site, which you can do by clicking here:

The second post this week of the ICA deals with proposals that are being discussed that would expend current trademark rights and adding new procedures that would amount to quick take down of domains without notice or right to defend.

Again quoting from the ICA site:

“”””Domainers may think that RPMs are something they can check on their car’s tachometer, but WIPO is proposing a new species of RPMs that have the potential to fundamentally change the domain name dispute arbitration process — and substantially increase the risk of reverse domain name hijacking – first at new gTLDs, and later at incumbent gTLDs.

The ICA is actively working to protect registrant rights as this process goes forward.

On March 13, 2009 Eric Wilbers, Director of WIPO’s Arbitration and Mediation center, dispatched a letter to several high-ranking ICANN executives regarding the protection of trademarks on new gTLDs. That letter is available at http://www.wipo.int/export/sites/www/amc/en/docs/icann130309.pdf.

“””It is these further, as yet unknown models that are worrisome, to the extent that they begin to displace the UDRP as the mechanism for resolving allegations of trademark infringement against domain name registrants. Trademark owners have been openly discussing notice-and-takedown procedures for ordinary infringement allegations. ICA believes that such expedited procedures are appropriate for websites that are engaged in illegal activities such as phishing, malware distribution, or the hosting of illegal content such as child porn, but that they do not afford adequate due process in situations now subject to the UDRP. Registry applicants will be under intense practical pressure to offer the full range of RPMs – including “further models” – as the WIPO letter makes it clear that a registry’s endorsement of such mechanisms will assist its application and its implementation of “adequate RPMs” will be a significant consideration in any post-delegation case leveled against it.

The UDRP is far from perfect, and domainers have many of the same complaints about it as trademark holders, including its cost and the lack of uniform appeals mechanisms and binding precedents. But reform of the UDRP is a serious subject worthy of separate consideration – “complimenting” it in the context of developing the final rules for the rollout of new gTLDs, where trademark owners are the very squeaky wheel demanding to be greased before ICANN can open the new gTLD floodgates, is a near-certain formula for domainer rights getting short shrift – despite WIPO’s statement that it “appreciates the need to strike a reasonable balance between the protection of trademark rights…and the legitimate expectations of good-faith domain name registrants”.

The ICA will continue to actively monitor and participate in the new gTLD process as it relates to trademark protections and all other matters relevant to our members. We learned last week that the IPC was open to having non-constituency members serve on its task force preparing trademark protection recommendations and we nominated ICA President Jeremiah Johnston, who oversees Sedo’s Rights Protection Program. While we hope the IPC will incorporate the domainer viewpoint within their working group we will provide input no matter what. We are also actively participating in the GNSO’s Registration Abuse Policy Working Group and in the Business Constituency’s own internal discussions of appropriate trademark protections. In all of these endeavors we will continue to be guided by the initial position on rights protection staked out in our December 2008 comment letter.

•    Strong, cost-effective, and readily implemented protections for rights holders should be established but they must be limited to enforcing their rights under existing law and not be premised upon the creation of broader rights by ICANN fiat. It is for this reason that we object to creation of a reserve list of trademark names as this would provide rights protections beyond the geographic and relevant marketplace limitations of trademark law. We also object to the imposition of any new rights or procedures that would supplant or supplement the UDRP absent extensive consideration of such proposals in a process that ensures that registrant concerns about current UDRP enforcement trends are heard.

It is critically important that IP rights protections adopted in conjunction with the gTLD process be limited to protecting existing rights conferred by relevant law and do not create newly expanded rights beyond the scope of current law.

Any extralegal expansion of IP rights resulting from the gTLD process has the potential to find its way into and further bias the UDRP against good faith registrants. This concern is particularly acute given that the World Intellectual Property Organization, which is inherently biased in favor of IP rights and their expansion and also serves as a leading arbiter of UDRP cases, is the only designated provider of dispute resolution services for legal rights objections and that such disputes will be decided by a single panelist.

Notwithstanding that caution, we support requiring gTLD applicants to adopt strong best practices to protect IP rights and, if the method chosen is a sunrise period, we would urge that trademark owners be charged only a reasonable minimum fee to register their protected names at the second level on the new gTLD.

However, we strongly object to suggestions that ICANN establish a near-term requirement for cost-free takedown procedures for domains alleged to be established in bad faith for both new and existing gTLDs, as establishment of bad faith registration is already one of the key elements of the UDRP – it should remain one of three elements in a balanced proceeding, and not become the single determinative element in a biased proceeding. Any alteration or supplementation of the UDRP should not be implemented as a footnote to new gTLD implementation but only after presentation to and consideration by the community — and such process must take into consideration and redress concerns with the present UDRP voiced by registrants and not simply react to the complaints of trademark interests.”””

Once again you should read the entire post where you can do by clicking here.

The ICA is the ONLY group representing domain holder in this process.

There is a mind blogging amount of issues arising from the new gTLD’s.   It’s a full time job.

You need representation in this process.  You need someone to represent your interest.

You need to join the ICA.  It’s a lousy $295 a year.

Not only do they need the money but just as important they need the numbers.

The ICA needs to have hundreds if not thousands of members to give them more credibility and a bigger presence in these proceedings.  The ICA needs to represent not just the “big” guys but all domain holders.

Believe me, if ICA does not get the support they need its going to cost you a lot more than the $295 a year in fees, legal fees, and losing domains.