Reviewing RPMs – Do ICANN’s Safeguards Support Brand Protection?

In anticipation of a subsequent gTLD application round, ICANN is now conducting its review of the Rights Protection Mechanisms (RPM) – essentially, safeguards built into the New gTLD Program to help trademark owners with brand protection – implemented during the first New gTLD round.

What is the RPM Review?

The RPM review is one of the four required reviews that ICANN must conduct before opening a subsequent gTLD round, which ICANN has committed to do “as quickly as possible.”

As a part of this review, ICANN is examining the effectiveness of the existing RPMs, including the Trademark Clearinghouse (TMCH), Uniform Rapid Suspension (URS) system, and the Post-Delegation Dispute Procedures (PDDRP), and how these RPMs interact with other elements of the New gTLD Program to support brand protection.

To fully examine all elements of the RPMs and receive input from all parties, ICANN collected and analyzed data and published its Draft Report for public comment. While the comment period, which ended on May 1^st had low participation, commenters identified areas where the current RPMs have been successful, areas for improvement, and indicated where RPMs did not meet their stated objectives. A number of commenters indicated that more work and time was needed to fully analyze and understand the effectiveness of the safeguards implemented by ICANN.

While most brands and brand advocates that have taken advantage of the current RPMs seem to be generally satisfied with the protections offered, commenters identified shortcomings and made suggestions to improve the existing RPMs.

What Works and What Doesn’t, According to the Comments

• Predatory pricing during Sunrise: As experienced by many FairWinds’ clients and indicated in a number of comments, pricing during Sunrise periods was found to be excessively high in a number of gTLDs. Given that trademark holders already paid a registration fee to the TMCH for validation services and understanding that the costs and resources needed for registries and registrars to implement Sunrise services, brands still found Sunrise fees to be excessively high in certain instances. Rights holders also found that certain registries would charge high prices for selective trademarks during Sunrise. In some instances, the trademarks were explicitly non-generic and there was no explanation as to why the trademark was singled out for a higher price. In other situations, the trademark may be considered generic in some instances, but the more generic use of the trademark was in no way related to the TLD string in question. Protections against this sort of behavior should be build into the RPMs – Registry Operators should not be permitted to capitalize on a potential generic use of a trademark to charge higher registration fees to these brand owners.

• Trademarks being reserved and not available during Sunrise: As experienced by some FairWinds’ clients and stated by numerous commenters, there were many instances where brands would attempt to register a trademark during a registry’s Sunrise period and discover that the trademark was unavailable. This was commonplace for trademark holders who were attempting to protect a mark that was more generic in nature. However, while more infrequent, this also occurred for non-generic trademarks. In cases where the domain was released after Sunrise, the trademark holder was not provided with the first right to register the domain as the RPMs implemented by ICANN were designed to do.

• Expansion of TMCH Claims Services: Commenters applauded the extended TMCH Claims services offered by the TMCH and encouraged the continuation of this service. However, commenters also indicated that the entire scope of TMCH Claims services, including notification of the TMCH registration to potential domain registrants, should be lengthened beyond the current 90-day requirement. Additionally, many would like to see the TMCH Claims services expanded to include labels beyond the identical match of a trademark. While there appears to be general satisfaction with the TMCH Claims service, it should be noted that in FairWinds’ experience and as stated in various comments, most trademark holders registered with the TMCH in order to register domains during Sunrise, qualify for registry-specific blocking offerings, or to meet the requirements of Specification 13 and not for TMCH Claims services.

• Limitations of the URS System: Brand owners have generally found the URS inadequate due to limitations of the remedies offered. A successful URS complaint only results in the domain name being suspended, rather than transferred to the Complainant like it would be in a UDRP. The URS should be modified to automatically transfer the domain either at the time the URS complaint is successful or at the conclusion of the current registration term. Many commenters believe this would increase the utility of the service and, as a result, more brands would look to the URS as a good remedy.

• Registry Blocks: Individual registries’ “domain block” services were not contemplated or analyzed in ICANN’s RPM review report since they are voluntary and particular to each registry. However, many commenters took the time to applaud the offerings, as these “blocks” have become an integral part of many brand owners’ defensive registration strategies. Despite the fact that some trademark holders have had challenges with selected second-level domains not being included in certain “block” offerings, commenters were all-in-all satisfied with registries that offered this supplemental RPM.

• PDDRP: Almost all commenters indicated that more time and data was necessary in order to evaluate the effectiveness of the PDDRP.

What’s Next?

ICANN’s report, updated to take into account the input received during the public comment period, will be used to inform the future policy work of the Generic Names Supporting Organization (GNSO), the independent review of the TMCH, and the Review Team on Competition, Consumer Trust, and Consumer Choice.

Given that many commenters identified the need for more time and data before making a conclusion regarding certain RPMs, and given the controversy surrounding .SUCKS, it will not be surprising if more time is granted to fully and adequately assess the RPMs and how they interplayed with other elements of the New gTLD Program.

All of this – the time required to complete this and the other mandated reviews, the input received and findings, as well as the future policy work that will be required within the GNSO – will influence the timing of when a second new gTLD round will open.