Other Trademark issues

Comments at Nairobi Public Forum

Unlike the Clearing House and URS that have been subject to hard-thought community review and improvement, the present PDDRP proposal is basically intact since the IRT report. With respect to this very complicated and special trademark protection mechanism that may be applicable to both top and second level, substantive works are still badly needed to be done. The present judgment criteria are highly subjective and in a large part subject to the discretion of the expert panel. Furthermore, application of the procedure at the second level impute an indirect liability on Registry. This may have serious chilling effect to drive the registry to monitor and supervise not only the domain name strings but the content of the websites that the domain names are used to prove their innocence. As a result, this will impose new restriction on registrants.

Discussions on the lists

The Final Report of GNSO STI addresses a couple of serious concerns from the community deriving from the IRT Report. At-large community actively participated in the STI report drafting process and submitted its minority statement. It's believed that the users' concerns and expectations have been sufficiently reflected on TC, URS and related issues. But STI has its mandate limited to the Board request and thus leaves out another critical issue that was not inquired by the Board--Post-delegation Dispute Resolution Policy (PDDRP). PDDRP has always been a highly controversial issue since its inclusion in the IRT Report but has never been fully consulted with the community and thoroughly reviewed by any post-IRT multi-stakeholder group.

These PD-DRP looks like an expanded UDRP against registries. Its
caveats lie in many aspects:

a) The substantive rules are ambiguous. It heavily relies on the
"reputation" of a complainant's mark to make the determination. But
the reputation can absolutely be interpreted very differently in the
global context.

b) It imputes a dubious and new contributory infringement liability on
a registry that "profits from" the registrants' infringing domain
names at the 2nd level. This will no doubt create a lot of new
business (chain suits) for lawyers.

c) I do want to know who will be the "independent dispute resolution
provider", which will select and appoint the panels to sanction or
suspend the TLDs or domain names. Remember: it will be the
International Centre for Expertise of the International Chamber of
Commerce that will administrate Morality and Public Order Objections.