Icann Mechanisms

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Прегледни рад

347.77:004
doi:10.5937/zrpfns56-33016

Fahed А. Wahdani
Ph.D. Student
University of Debrecen
Faculty of Law
[email protected]

ICANN MECHANISMS:
EXTRA REMEDIES EVALUATION
Abstract: At incorporation with World intellectual property organization,
ICANN has created administrative mechanisms to solve contested domain names
and other rights related to the use of trademarks in Cyberspace. In this context, this
mechanism called UDRP was limited to general top-level domain names because
at the early beginning of the world wide web, the conflicts were basically surrounded
by domain names chains such as .com, .org, .net with high trade value. On top of
that, and because the increasing demand in the domain names industry was huge,
ICANN seeks to pump new domain names chains into the market to encounter
such an increasing demand for domain names. Accordingly, this step has increased
the conflict while the UDRP mechanism was limited to solving the conflicts over
top-level domain names. In this connection, ACANN had to find another
mechanism to solve other conflict-related with the new gTLD. This article tries
to shed light on these remedies and their effectiveness in solving such conflicts.
Keywords: RPMs, gTLDs, UDRP, Domain names, Trademark.
Abbreviations
gTLDs General top-level domain names TCS Trademark Claims Service”
ICANN The Internet Corporation for PICDRP Interest Commitments Dispute
Assigned Names and Numbers Resolution Procedure
RPMs Rights Protection measures UDRP Uniform dispute resolution
policy
URS the Uniform Rapid Suspension PDDRP Post-Delegation Dispute
System.” Resolution Procedure
LRO The Legal Rights Objection TM- Trademark Post-Delegation
PDDRP Dispute Resolution Procedure
PDDRP The Trademark Post-Delegation RRDRP the Registration Restriction
Dispute Resolution Procedure Dispute Resolution Procedure

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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

IGO intergovernmental” institutions PICDRP public Interest Commitments


Dispute Resolution Procedure
WIPO World intellectual property
organization
TCHM Trademark Clearinghouse

1. INTRODUCTION

Several disagreements over cybersquatting are resolved out of court because


of the considerable judicial costs1. The alternative UDRP POLICY became the
favorite track to solve cases related to domain name disputes. In this context, to
encounter the increasing demand for domain names, the colossal flourishing of
the domain names industry has led ICANN to supply 400 New gTLDs. Such New
gTLDs might be “unrestrictive or restrictive, or details attribute, for example,
taking the brand, city, community, Culture, industry, or Language. With 200 more
gTLDs delegated by January 2018. However, these New gTLDs cached around 22
million customers under second-level domain names2 registrations3. In return,
increasing the margin of gtld domain names has, in turn, increased the conflicts
over domain names.
Furthermore, as a result, and bearing in mind that UDRP was limited to
specific genera of gtld, ICANN’ had to solve this dilemma by finding a new
mechanism to solve this increasing disputation4. Such theses new mechanisms or
remedies emphasize the vital roles of ICANN as a real guardian of intellectual
properties related to new gtld5. The question arises hereafter new gTLDs are
approved. What are the mechanisms of protection given to trademarks? Besides
the “Uniform Domain Name Dispute Resolution Policy” (UDRP) that applies to
all new gTLDs, ICANN has created Mechanisms based on a wild margin of
“Rights Protection measures called (RPMs). This umbrella includes, among others,
a” Uniform Rapid Suspension system” (URS) and a “Post-Delegation Dispute
Resolution Procedure,” a “Trademark Clearinghouse” that use in connection with

1 Roger Miller ,Business Law Today, The Essentials: Text and Summarized Cases Cengage

Learning USA 2021, 163.


2 Frederick Abbott, Thomas Cottier, Francis Gurry, International Intellectual Property in

an Integrated World Economy, Wolters Kluwer, New York 2019, 550.


3 Ibid, 550.
4 ibid 550.

– World Intellectual Property Organization, Standing Committee on the Law of Trademarks,


Industrial Designs and Geographical Indications(thereafter SCLTID &GI) Thirty-Eighth Session
Geneva, October 30 to November 2, 2017 Update On Trademark-Related Aspects of The Domain
Name System WIPO, Geneva 2017, 3.
5 ibid 3.

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Sunrise periods and “Trademark Claims services”6. These different remedies are
presented in:
1. The Legal Rights Objection (LRO.
2. Clearinghouse.
3. The Uniform Rapid Suspension System (URS)
4. The Trademark Post-Delegation Dispute Resolution Procedure (“PDDRP”)

2. RPMS

Because UDRP policy is limited to gtld, and based on the ICANN decision
to facilitate dispute resolution, ICANN was forced to find additional alternative
policies to fix increasing disputation over domain names resulting from colossal
demand in this industry. Thus, different mechanisms are founded to deal with new
domain names. In this connection, RPMs combine curative and precautionary
procedures, including the top-level and second-level domain names, before any
new gTLDs are handed over by ICANN, the particular registry operators. Hence,
RPMs comprehensively influence the intellectual property implementation relat-
ed to global society7. In this regard, The ICANN supervisors adopt all the appli-
cable procedures and services related to its second-level domain name enrollment8.
Although ICANN’s RPMs are a jumble of policies, they focus on the General core
of preserving intellectual property rights, especially trademark rights9, including
the rights of the domain name owner10.

2.1. Legal Right Objection Procedure


“The Legal Right Objection” (LRO) approach is a crucial safety measure
instrument that empowers a trademark holder to challenge an appeal for a gTLD
chain that can infringe the Trademark under normally approved and worldwide
acknowledged concepts Of law11. “Since it had started in 200812, ICANN gives
“the Legal Rights Objections procedure” (LRO) to permit the complainers with
6 World intellectual property orgaanization, Frequently Asked Questions, thereafter (FAQ),

https:// www.wipo. int/amc /en/domains/ lro/faq/#24a ,accesed 16 may 2021.


7 Tana Pistorius, Intellectual Property Perspectives on the Regulation of New Technologies

Edward Elgar Publishing, 2018 36


8 Taubman, Antony, and Jayashree Watal. Trade in Knowledge: Intellectual Property, Trade

and Development in a Transformed Global Economy. UK: Cambridge University Press2022.,129.


9 i Tana Pistorius 37.
10 Taubman, Antony, and Jayashree Watal, 129.
11 Justine Chew, Update & Consultation on New gTLD Subsequent Procedures Consensus

Building on Recommendations objections 2020, 4.


12 World Intellectual Property Organization, Report of the Director General to the 2020 WIPO

Assemblies: Retrospective 2008-2020, WIPO Publisher, Swiazerland 1050/ 2020, 42.

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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

standing to process disputes versus the authorized defined new gTLD chains. In
the relationship, as mentioned earlier, the priority will be in favor of the complain-
er by default. However, some exclusions would be considered, for instance, if the
competitor fails to react to the Objection13. Each Objection gives rise to an arbi-
tration process with the WIPO Arbitration and Mediation Centre dealing with
legal rights objections14.
Therefore, in the instance of the domain name (.Lotto) chain lawsuit, the
objector had failed to confirm the probability of material harm. Therefore, the
claimant party prevailed. Moreover, for the opportunity to prove the material
damage, the objector declared that while European lotteries stick to strict require-
ments of responsible gaming, through decreasing potential damage to the com-
munity and particularly vulnerable targeted parties, the general accessibility of
the” .10tto” domain name might confer upon unlawful operators the benefit of
connecting their website with lottery games authorized by the state would cer-
tainly damage the interests of unwary customers15.
The plaintiff might file a formal action to the Objection, subject to the dispute
policy. To name a few, the objector with the standing might submit standard ar-
guments in the areas of “community opposition principles, legal rights, public
interest, or confusion”16. As for the(.INT) domain name and other stakeholders
and individuals, the observer bodies and other functional agencies of the united
nations are acknowledged as satisfying the requirements17. Besides that,” inter-
governmental” institutions (IGO) are also qualified to arrange a lawful rights
argument if it matches the standards for enrollment (.INT) domain name18. In this
regard, the global treaty within or amongst national governments needs to have
recognized the organizations. Also, these recognized organizations must be ex-
tensively considered an independent global legitimate individuality and must be
the topic of and controlled by international legislation19. In the same context,
INGOs are given 90-days as service of claims notifications for every new gTLD20.
Moreover, an effective argument will file against the correct application from
being accepted or passed on by ICANN in this situation. For example, the new

13 T. Pistorius 37.
14 Murray, Andrew. Information Technology Law: The Law and Society. 4th ed. UK: Oxford
University Press. 2019,300.
15 Burkhard Hess, Maria Bergström, Eva Storskrubb, EU Civil Justice: Current Issues and

Future Outlook 2016, Hart publishing, UK-USA I71.


16 T. Pistorius, 37.
17 ICANN, gTLD Applicant Guidebook (v. 2012-06-04) Module 3, 2021. 4 June 2012,3-6 .
18 ibid 3-5.
19 ,Ibid 3-6 .
20 Luc Seufer, The next round of gTLDs is around the corner, August 9, 2019, https://ebrand­

services.com/the-next-round-of-gtlds-is-around-the-corner/. Accessed 25 June.2021.

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gTLD applicant might try to resolve with the objector or repeal the involved gTld
application. The question that can be left for discussion here is whether compul-
sory to file a response to a Legal Rights Objection? In this connection, the reac-
tions need to be sent online to the WIPO Center, using the WIPO Center’s offecial
“LRO frame” Response to inform both ICANN and the objector. The reaction
declaring cost should be listed when declaring the reaction. The International
Center for Dispute Resolution manages strand confusion oppositions. The Exper-
tise of the International Chamber of Commerce addresses each community and
social challenge RElated to their interest21.
On top of that, a reaction has to include, at the very least, the applicant’s
names, complete call info, as well as the full points that were answered to the
declarations made in the Objection22. From 2012 to 2013, the Center received 69
compliant LRO requests, of which panelists decided on WIPO’s LRO23. In this
regard, ICANN must reduce the risk of inconsistent outcomes in the String Con-
fusion Objection Process, Especially where the objector seeks to object to multi-
ple applications for the same String24. The question that arises here is What cri-
teria will the panel use to determine the Legal Rights Objection outcome?

2.1.1. the criteria used by the panel to determine


the Legal Rights Objection
According to ICANN Applicant Guidebook section 3.5.2, the potential un-
justifiably damages or taking the privilege of the distinct personality unjustly or
enrolled or non-enrolled trademark reputation related to the objector, or else pro-
duces a possibility of confusion in linking the gTLD application to the objector
trademark will be vital criteria to decide the result of “Legal Rights Objection”25.
For activation of the objection mechanism based upon trademark legal rights, the
panel will consider the resulting nonexclusive circumstance: The objector’s mark
is exactly similar or identical. The penal will consider whether the objector’s use
of rights in the mark has been bonafide or not.26 Also, the relevant part of the
general domain name is associated with the mark of the appellant, objector, or
other stakeholders. Moreover, The purpose was to request that gTLD by Applicant
be highly considered. For instance, Suppose the contenders applied for or operat-
ed TLDs or registered them in bad faith. Alternatively, the domain name was
identical or confusingly similar to the marks of others.

21 Murray,300.
22 World intellectual property organization, (FAQ )16 may 2021.
23 World Intellectual Property Organization 2020, 42.
24 J. Chew 2020, 10.
25 World intellectual property orgaanization (FAQ), 16 may 2021.
26 ibid

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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

Moreover, it will be crucial that the applicant or the contender has any pre-
vious knowledge of the objector’s mark at registration or operation27. Regardless
of to what degree the competitor has indeed utilized or has truly done provable
work to make use of matching to the gTLD about a bona fide related to presenting
of services or products info in a manner that does not conflict with the reasonable
and legal performance by the objector of its mark rights28. Besides that, the panel
considers if the petitioner’s behavior beyond using the gTLD would create a pos-
sibility of confusion against the mark of objector as to the source, sponsoring,
association, or approval of the gTLD29.

2.1.2. Dispute settled under the Legal Rights Objection


Based on the party’s common desire to give a chance to solve their conflict
using meditation, there is no legal obstacle, and just they are requested a 30-day
suspension. In this regard, the role of the WIPO center is limited to assisting
in achieving this wish without any extra fees or costs30. In this connection,
there is a requirement for there is demand considered consist of joining a “stat-
ute of limitations,” consisting of an arbitration stage before settlement (as an
example, to make sure that a subordinate infringing weblink might be elimi-
nated without retrieving the domain itself), and also enabling longer due dates
to react to cases of the violation 31. The requestor Objection is restricted to 20
pages or 5,000 words, Whichever is less, except the other extra attachment.
The objector or Claimant should likewise describe and submit any attached
defending proof 32.

2.1.3. LRO gives the remedies


As for the possible remedies the LRO can provide, the treatments are restricted
to the gain or rejecting of the Objection. Furthermore, despite no financial dam-
ages, the dominating litigant is qualified to pay the panel partially33 however, some
reviewers call to apply the rule that forces the loser to pay”similar to the practice
“in trademark opposition and cancellation proceedings in the EU34.”

27 ibid
28 ibid
29 ibid
30 World intellectual property orgaanization (FAQ), 16 may 2021.
31 John McElwaine, Christopher Casavale, Nelson Mullins – “Tackling bad faith registration

of domain names in a fast changing landscape”, WIPO Magazine, 6/2019, 42.


32 World intellectual property organization, (FAQ), 16 may 2021.
33 Ibid.
34 J. McElwaine, C. Casavale, N. Mullins, 6/2019, 42.

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2.1.4. Retain the court options


“The Legal Rights Objection” as an alternative policy to solve the conflicts
between the main stakeholders does not prevent the parties from choosing to go
to court as a possible further step to resolve the conflict that either defendant might
have to send the case conflict to the court35. Additionally, the present system
demands such cases to be appealed before a tribunal of the competent jurisdiction,
which costs substantial money, time, and effort36.

2.2. Trademark Clearinghouse (TCHM).


The (TCHM) is an ICANNmandated central database of information on
trademarks37 to boost intellectual property defense in Cyberspace38. In this respect,
the data source of legitimate brands will absolutely shield these trademarks, par-
ticularly when the new TLDs are launched39.

2.2.1. Clearinghouse mechanism and functions


(TMCH) has truly been developed to improve security and decrease the pro-
tection cost for trademark holders. On the other hand, the Trademark Clearinghouse
will certainly approve and confirm legal rights info. It will unquestionably sustain
trademark guarantee claims and sunrise service needed in all-new “top-level domain
names” introduced in ICANN policy. It is anticipated to play a crucial function in
the new TLD program’s launch and ensure that trademark legal rights can be smooth-
ly protected40 In this connection, “Trademark Clearinghouse” (TMCH) enables
personal Trademark to do protective enrollment of new gTLDs related to these
trademarks before opening the enrollment to the public41.” It functions by authen-
ticating trademark information submitted by the right holders and providing the
relevant information to the registry operators and registrars42.

35 World intellectual property organization, (FAQ), 16 may 2021.


36 J. McElwaine, C. Casavale, N. Mullins 6/2019, 42.43.
37 Murry,380.
38 Barney Warf ,The SAGE Encyclopedia of the Internet, SAGE, U K – USA – India – Singapore

2018, 262.
– F. Abbott, T. Cottier, F. Gurry 551.
39 Bobbi Sandberg, Networking The Complete Reference,New York 2015, 289.
40 Jennifer Wolfe, Anne Chasser, Domain Names Rewired: Strategies for Brand Protection

in the Next Generation of the Internet, USA 2013 ,68.


41 Shahrooz Pouryousef, Muhammad Daniyal Dar, Suleman Ahmad, Phillipa Gilll, and

Rishab Nithyanand , Extortion or Expansion? An Investigation into the Costs and Consequences
of ICANN’s gTLD Experiments, Passive and Active Measurement: 21st International Conference,
PAM 2020, Eugene, Oregon, USA, March 30-31, 2020, Proceedingsswiszrland, 2020, 147.
42 J. Wolfe, A. Chasser 68.

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The “Trademark Clearinghouse” will certainly not just allow trademark


proprietors to declare the total of the trademarks they have openly in public; how-
ever, as soon as a trademark has timely been sent and also verified right into the
main database, the trademark proprietor will surely be provided an advantage
treatment in terms of enrolling pertinent domain names throughout sunrise dura-
tions43. The Sunrise enrollment procedure gives concern and full accessibility to
the trademark owner to register the domain name(s) similar to his Trademark44.
Moreover, “the Trademark Clearinghouse” will definitely not just be a resource
of info that brand name proprietors can log into to see what has been trademarked.
However, it will also alert trademark proprietors who have sent their trademark
info to the database source45. Furthermore, If a trademark holder wants to omit
his mark from all new gTLDs frames, it would assuredly get involved in each new
“Sunrise duration.”46. In that situation, the trademark holders will obtain a direct
alert via email or SMS from “the Trademark Clearinghouse” to inform them if
somebody else attempts to enroll domain names with their name or Trademark
under a new gTLD.
The Clearinghouse mission will certainly be based on two practical functions:
l. Authentication as well as recognition regarding the trademarks in the Clearing-
house. 2. Work as a data source to provide details to the brand-new gTLD registries
to sustain pre-launch sunrise or trademark cases services47.

2.2.2. Clearinghouse importance


There are three primary advantages of “the Trademark Clearinghouse”:
First: the Trademark Clearinghouse will completely not just allow trademark
proprietors to state all of the trademarks they have openly. For example, Nike will
most likely not use the sporting activity new gTLD to acquire the Nike domain
name. Nevertheless, as soon as a brand has been sent and verified right into the
main database, the trademark proprietor will be given advantage treatment against
other stakeholders about enrolling appropriate domain names throughout “sunrise
durations48.”
Second: The Sunrise enrollment procedure offers top priority access to the
trademark owner to register the domain names like the Trademark49. “The trade-
mark Claim services” send out alerts to the trademark owner when a domain name

43 Ibid 68.
44 T. Pistorius, 38.
45 J. Wolfe, A. Chasser 68.
46 T. Pistorius38.
47 J. Wolfe, A Chasser, P68.
48 ibid 68.
49 T. Pistorius, 38.

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meets the Trademark enrolled by a person throughout the Claim duration of an


offered new gTLD50. In that instance, they will certainly get a notification email
from the “Trademark Clearinghouse” to inform them if somebody else attempts
to enroll domain names, including their name, under the new gTLD.
The third factor that is so vital is that the “Trademark Clearinghouse” for
personal trademark proprietors permits to use “of the Uniform Rapid Suspension
System” (URS). In this regard, the goal of the TMCH is to pave the way for both
sunrise services and trademark claims services to take their position in terms of
trademark protection51.
Among other organizations and institutions in Europe, ICANN has chosen
Deloitte as the TMCH in Europe52. To this point, Deloitte (www.deloitte.com) is
one of the world’s biggest publicized accounting firms as qualified solution sys-
tems, use ADR and (ICANN)53. This choice indicated ICANN’s practical steps
to give more momentum to the protection given to trademarks within new gtld in
Cyberspace. Moreover, The “Trademark Clearinghouse” double mission as a
comprehensive database and alert will certainly provide security against trademark
violations. Still, it will possibly not completely safeguard individuals enrolling
domain names, including trademarked names54. According to available reports,
the TMCH had indeed, by February 2018, collected over 43,000 access55.
Furthermore steps, ICANN has incorporated two stipulations to aid trade-
mark proprietors in shielding their brand names within the gTLD second-level
domain name enrollment procedure: “the Trademark Claims Service” (TCS) and
“the sunrise” stipulations. Following the Trademark Claims Service, a minimum
of the initial 60 days after a “gTLD” release for a specified duration, the “Trade-
mark Clearinghouse” will certainly alert registrants whose potential second-level
domain name matches their mark in the Clearinghouse56.
The Center has indeed commented that the TMCH needs to deal with stake-
holders fairly and do not obstacle rights holders in dealing with trademark regis-
trations acquired through evaluation and registration systems legally as used in
numerous international jurisdictions. Apparently, practical steps might be taken
to recognize any illegal invocation related to contested rights in particular contexts
if and where pertinent57.

50 ibid p38.
51 L. Seufer , August 9, 2019.
52 J. Wolfe, A. Chasser, 68.
53 Crain, Michael A., William S. Hopwood, Richard S. Gendler, George R. Young, and Carl

Pacini.. Essentials of Forensic Accounting. 2nd ed. John Wiley & Sons. 2019,169.
54 J. Wolfe, A. Chasser, 68.
55 F. Abbott, T. Cottier, F. Gurry 551.
56 J. Wolfe, A. Chasser 69.
57 F. Abbott, T. Cottier, F. Gurry 551.

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Despite “the trademark claim service” is not the best system when combined
with the obligatory sunrise arrangements, the possibility of extensive violation
within registrations of second-level domains may be decreased. Under the sunrise
arrangements, for a minimum of 30 days prior to the general public launch dura-
tion for a new general TLD, the Clearinghouse registered mark might prioritize
the right holder to register the domain names that contain his mark58.

2.3. Uniform Rapid Suspension System


Besides the “Uniform Domain Name Dispute Resolution Policy,” ICANN
offers another mechanism to facilitate dispute resolution. “The Uniform Rapid
Suspension System mechanism” (URS), a dispute resolution forum. In this context,
even though most dispute cases are subject to be resolved through the UDRP,
using the advantage given by common law trademark claims, besides having a
very simple procedural frame, the “Uniform Rapid Suspension system” can be
used only in narrow domains limited in registered trademark holders with very
clear infringement claims59. The URS is planned to offer an expedited treatment
for dealing with clear violation cases versus trademarks. Alongside that, the URS
is developed to provide a much faster and more economical tool to prevent the
operation of website violence. At the same time, the UDRP is limited to transfer-
ring the objected domain name or canceling it60.

2.3.1. the Uniform Rapid Suspension System mechanism


ICANN has designed a special tool to meet new challenges in the domain
names industry and deal with specific second-level RPM cases61. However, in a
URS case context, once it is shown that a domain was identical confusingly with
an authorized mark currently under usage, the owner has no genuine right or legal
interest regarding the objected domain name62 . The domain name that was enrolled
and utilized in bad faith will be stopped and suspended in the network resolution.
Therefore, although developed as a fast-track modification of UDRP, URS’s ef-
fectiveness is yet to be seen63. The Complainant reports their Objection through
an allowed URS policy.

58J. Wolfe, A. Chasser 69.


59Frank Cross, Roger Miller, The Legal Environment of Business: Text and Cases, Cengage
Learning, UK – USA 2021, 172.
60 J. Wolfe, A .Chasser 68.

– T. Pistorius 38.
61 F. Abbott, T. Cottier, F. Gurry 551.
62 Mark Jeftovic, Managing Mission – Critical Domains and DNS: Demystifying nameservers,

DNS, and domain names, Packt Publishing Ltd, UK 2018, 56.


63 T. Pistorius 38.

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Moreover, the Complainant should pay for fees within 24 hrs Of submitting
or even it is immediately canceled. In this context, the Complainant has to submit
particulars of the Objection as laid out in the URS proceeding. Along with the
UDRP, three crucial elements need to be declared, and all have to exist64. Despite
some similarities with UDRP, the legal scholar M. Jeftovic indicated that there
are huge distinctions when it comes to URS choice, which Makes it different from
the UDRP, particularly the margin of decisions or choices given upon the legal
holder’s request. The Complainant can request not to transfer the contested domain
name, and rather, it is suspended and out of order. Furthermore, the Complainant
does have an extra choice to extend the registration duration of the suspended
domain name at the market aria. Another vital difference that would make URS
more practical and preferred is an appeal procedure that the UDRP policy still
lacks, such as this further practical step65.
The URS is expected to bring greater accountability of evidence for claim-
ants. The URS likewise consists of various extra registrant defenses over an in-
creased duration. The only solution a URS panel might give success66 and URS
provides efficient protection for trademark proprietors versus cybersquatting. The
significant distinction between both methods is that the URS is quicker and more
economical than the UDRP.
Moreover, they participate in the substantive requirements where the URS
substantive criteria resemble the UDRP67. Unlike the UDRP, which is widely used
to top domain name conflict, the URS, as Michael Scott believes, is mainly used
for the new gTLD domain names and is meant to suspend the targeted domain name
temporarily68. The debated domain name is comparable or identical to the trade-
mark registration to particular requirements. Therefore, the defendant has no le-
gitimate right to enroll and owns the disputed domain name. Accordingly, the
disputed domain name is kept by the Domain Name registrant under arbitration69.

2.4. Post-Delegation Dispute Resolution Procedure (PDDRP).


The “Post-Delegation Dispute Resolution Procedure” (PDDRP) is essentially
A preventive mechanism that enables enrolling marks preemptively by trademark
holders whose Trademark is had recorded in the Clearinghouse. The (PDDRP) is
fundamentally made to carry out as a higher-level executive device to ensure the

64 M. Jeftovic 56.
65 M. Jeftovic 56.
66 Michael Scott, Scott on Multimedia Law, Wolters Kluwer Law & Business, the Netherlands

2021, 5-99.
67 Ibid 5-99.
68 B. Warf 263.
69 Ibid 263.

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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

registry operators’ legal practice and ICANN70. Diffintaly, in this regard, in his
book The Liability of Internet Intermediaries, Jaani Riordan confirms that
The function of the PDDRP mechanism has participated in constituting secondary
administrative liability against infringement trademark by the registry operator71.

2.4.1. Post-Delegation Dispute mechanism


This tool can be considered a turning point in the ICANN relationship with
the registries operator of domain names. This mechanism’s importance is shrink-
ing the registration operator’s immunity against the other and making them re-
sponsible for their faults committed against others stakeholders and holding the
liability of such behaviors. As mentioned before, the main reason that had ignited
the conflict between trademark holders and domain name owners was the immu-
nity that registries have against the other main stakeholders.

2.4.2. Post-Delegation Dispute Resolution Procedure genera


The experts nominated by the committee will definitely figure out whether
the registry operator is negligent and suggest treatments. In line with this, there
are three kinds of the “Post-Delegation Dispute Resolution Procedure.” These
kinds of PDDRPs, are specifically: the Trademark Post-Delegation Dispute Res-
olution Procedure (TM-PDDRP), the Registration Restriction Dispute Resolution
Procedure (RRDRP), as well as public Interest Commitments Dispute Resolution
Procedure (PICDRP)72.

2.4.2.1. Trademark Post-Delegation Dispute Resolution Procedure


(TM-PDDRP)
The TM-PDDRP makes it possible for a brand holder to impose its claims
wherever one or more of its brands have definitely been violated by the registry
operator’s way of operation or into the usage of the gTLD. Moreover, TM-PDDRP
needs proof of the registry operator’s particular bad faith behavior or intrigue in
brand name violation (i.e., benefiting from motivating violation and the normal
registration charge) within the second or first level of a new gTLD. A specialist
panel figuring out a TM-PDDRP case might suggest ICANN a range of resolutions,
consisting of cancellations or ending the registry contract73.
In this regard, the registry operator is not responsible under the “TM-PD-
DRP” for any domain name registration that: (i) is enrolled by an individual or
70 T. Pistorius 38.
71 Jaani Riordan, The Liability of Internet Intermediaries, Oxford University Press, UK 2016, 214.
72 T. Pistorius, 39.
73 Ibid 39.

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body that is unaffiliated with the registry operator; (ii) is enrolled without the
indirect or direct motivation, temptation, initiation, or instructions of any individ-
ual or entity related with the registry director; and (iii) grants no direct or indirect
advantage to the registry. In that case, the plaintiff is needed to show, by persuading
and clear proof, that within the registry operator is endorsing behavior: (a) there
is a certain pattern or practice of particular bad faith purpose by the registry ad-
ministrator to benefit from the trade of trademark infringing domain names; and
(b) that the registry operator has a bad faith intent to benefit from the organized
enrollment of the domain names related the gTLD that is similar to or comparable
with the Claimant’s mark, which takes unjust benefit of the distinct character or
the trade reputation of the Claimant’s mark; or hinders the distinct character or the
reputation or credibility of the Claimant’s mark, or create or increase a possibility
of the amount of confusion with the Claimant’s mark 74.
In this regard, the moment the request is completely accepted, the operator
might be obliged to keep an eye on enrollments certainly not connected to the
questioned domain names within the PDDRP proceeding. Moreover, in uncommon
conditions where the operator showed bad intent, the contract might be in jeopardy
and end the registered agreement, aside from the unclear and extremely subjective
standards for documented behavior. This procedure will charge a liability indi-
rectly against the operator on the gTLD register to compel him to control the
domain enrolled in their operating system. That will certainly not simply restrict
the capability of new gTLD operators, and rather, it might increase a major re-
sponsibility considering the result to steer a register to monitor the information
and track the sites for which the domain name is utilized and the chains of domain
names itself for evidence of his good faith and honesty as well75.

2.4.2.2. public Interest Commitments Dispute Resolution Procedure


(PICDRP)
The “Public Interest Commitments Dispute Resolution Procedure” (PICDRP)
enables the complaints against a registry operator that might oppose “the Public
Interest Commitments (PICs)” made in the Stipulation of its registry arrangement.
The PICS consists of ICANN’s obligatory provisions and the registry operator’s
proposed dedications. On occasion, the operator does not dominate in the
(PICDRP), including the conflict resolution policy might suggest a range of treat-
ments, such as particular specific commitments (2i). After an initial evaluation,
ICANN sends the (PIC) announcement to the operator for 30 days to provide an
effort to solve the dispute. If the parties stop working to settle, ICANN will ask
74T. Pistorius 41.
75Jan Rosén ,Individualism and Collectiveness in Intellectual Property Law, Edward Elgar
Publishing, UK 2012, 264.

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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

the registry operator to describe how it complies with its PICS. Furthermore,
suppose that the operator did not want to cooperate to fix or continue not com-
mitting to legal measures made by ICANN; in that case, ICANN will put Deter-
mination in force and take remedial procedures76.
On top of that, anybody might submit a “Limited Public Interest Objection.”
Due to the comprehensive position base; nevertheless, complainers undergo a
quick look” procedure developed to determine and remove violent or foolish ob-
jections. An objection discovered to be clearly misguided or an offense of the right
to dispute might be removed at any time77, and such unfounded Objection will be
considered clear objection right abuse78.
The Objection might be formed to fall within the accepted classifications for
“Limited Public Interest objections. However, other truths might reveal that the
Objection might be illegal and submitted in bad faith. Numerous objections sub-
mitted by the associated or same parties against the applicant might make up for
harassment of the Claimant instead of a genuine defense of legal standards ac-
knowledged under basic concepts of general or international legislation. Further-
more, the Objection that assaults the applicant, instead of the applied-for String,
might violate the right of the legal Objection79.

2.4.2.3. the Registration Restriction Dispute Resolution Procedure


(RRDRP)
The “Registration Restriction Dispute Resolution Procedure” is planned to
deal with situations in which the registry operator of new gTLD related to com-
munity interests differs from the registration limitations detailed in its registry
arrangement.80 In this connection, the importance of the “RRDRP” function is to
deal with complaints related to behaviors that caused harm to the society or other
public characters or individuals due to the fact that a community-based limited
gTLD registry operator did not satisfy its commitments to control and watch the
registration and usage of domain names within the limitations specified related
to the gTLD registry contract81. The requirement for such a treatment is based upon
the concept that it would not be reasonable and fair to provide a choice in the new
gTLD frame allotment procedure to a claimant based upon a dedication to limiting
76 T. Pistorius, 40.
77 ICANN, 3-6 .
78 Ibid 3 -7.
79 Ibid 3- 7.
80 T. Pistorius, 40.

- L. Seufer , August 9, 2019.


81 Joost Pauwelyn, Pierre Véron, Edouard Treppoz, Julie Bertholet, Pierre-Alain Killias, Torsten

Bettinger, Bernard Hanotiau, Sarah Theurich, La résolution des litiges de propriété intellectuelle
/ Resolution of Intellectual Property Disputes, Publisher Université de Genève, Genève, 2010, 56.

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using a (TLI) to specific communities, groups, or other stakeholders or organiza-


tions. The inappropriate deeds of the registry operator may trigger damage to the
public society or its members of organizations and other associations82.

3. REMEDIES AND LIABILITY

One of the main prime factors deciding the effectiveness of ICANN policy,
and particularly the extra remedies adopted by ICAAN, is the element of liability.
One of the main questions left for discussion is if ICANN’s extra remedies can
apply the intermediary liability?

3.1. Intermediary liability


Under the TM-PDDRP, PICS, and the PICDRP, the RPMs force the New
gTLD registry operators to implement IP RIGHTS into their registration policies
and services( Xue, 2018). One might question whether a new type of intermediary
accountability is produced in the DNS. The RPMs require new gTLD operators
to take duty for the actions related to their domain name registrants. The Offered RPMs
in ICANN’s Systems are executed within the DNS frame. The future intermediary
liability might affect the international community’s benefits and intellectual prop-
erty enforcement83.

3.2. Remedies
According to the trademark post-delegation dispute resolution procedure
related to remedies and liability offered by ICANN, and based on the fact that
registrants are not an original party to subject to actions taken with the originals
parties of the conflict, ICANN has declared that the operators generally cannot
be subject to the form of “suspending, transferring deleting registrations, except to
the extent registrants are directors, officers, employees, agents, or entities under com-
mon control with a registry operator.” 84 85 Furthermore, According to suggested
remedies, statutory procedures will not impose any financial sentences punished
to any party except the fees and other costs granted based on the regulations86.

82 ibid 56.
83 T. Pistorius 41.
84 Trademark post-delegation dispute resolution procedure regulation thereafter (REG-

TMPDDRP), https://newgtlds.icann.org/en /applicants/agb/pddrp-04 jun12- en.pdf, 4 JUNE 2012.,


art 18, 18.1.
85 Ibid, art. 18-18.1.
86 Ibid, art. 18-18.1.

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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

4. EVALUATION AND CONCLUSION

The working group of ICANN has basically finished considerations of six


major and overarching topics; moreover, it has developed following different work
tracks to resolve some issues. To name a few: Subjects associated with the total
procedure, assistance, and outreach, besides the Statutory and regulative subjects;
and Matters connected to domain names String, objections, and conflicts; further-
more, the group work hardly on Internationalized Domain Names, functional and
other technical issues; in addition, it tried to solve the dilemmas of the top-level
domain that consist of Geographical names87. Even though the ICANN group has
revised all RPMs and other objection mechanisms mentioned above, they still need
more revision. It would be more accurate if the ICANN group combined all these
mechanisms within the UDR policy rather than designed them separately. In this
connection, such separated frames could distract the spent time and efforts dedicat-
ed to finding a solid resolution mechanism and make the essence of this mechanism
empty and meaningless. For instance, if the Complainant infringed trademarks by
different domain strings, one under gtld and the other under the second top-level
domain name string. Then it supposes he would submit two different complaints
within two different mechanisms to settle the cases related to his infringed trademark
rights. Besides that, there will be two different panels, and these panels might take
contractual decisions. Furthermore, the separated mechanism could have different
regulations that might hinder flexibility, accuracy, and centralization of decisions
resulting from different panels related to infringing trademark rights.
Moreover, these mechanisms were turning points for the registry operator,
bearing in mind that the registry agencies have enjoyed immunity against other
stakeholders at an early stage of Cyberspace emerging and early conflicts between
trademarks holders and domain names owners. Furthermore, giving immunity to
the registry operator was the main reason for igniting the conflict over domain
names in the early stage of Cyberspace and other rights related to trademarks in
Cyberspace. In this connection, PDDRP has put the registry operator under the
responsibility frame and made him liable for his behavior toward other stakehold-
ers. On top of that, and in terms of PDDRP, The Specialist committee might advise
a range of vast enforcement tools if the registry provider was responsible under
the Tm-PDDRP, including Preventive measures against further infringing regis-
tration in the future88. Another suggested penalty is to freeze accepting new domain
enrollments in the gTLD up unto such time as the offense( s) recognized in the
Determination is (are) treated or a set amount of time to fix it89.

87 L. Seufer , August 9, 2019.


88 REG-TMPDDRP, art., 18.3.1.
89 ibid art., 18.3.1.

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Moreover, in a very exceptional situation, the suggested remedy support


termination of the Registry contract if he acted in bad faith90.
One of the most paid attention updates over this mechanism, especially the
Trademark PDDRP, is having the appeal stage. Though this step comes late, the
author believes it gives conflicting parties more credibility, flexibility, and satis-
faction. Another issue that deserves to be considered is that some of these mech-
anisms keep the hierarchy of the relationship between ICANN policies and the
judicial system by prioritizing registration agreements to use ICANN policies to
resolve the conflict before that person can approach a court. For instance, the main
policy of ICANN related to the use of UDRP has declared that approaching UDRP
to resolve the conflict is mandatory to validate domain name registration. In
contrast, another mechanism has given up this hierarchy by approaching the court
concurrently with the case being heard within Trademark PDDRP. as an example,
in this connection, Article 22.2 declared that:” In those cases where a Party sub-
mits documented proof to the Provider that a Court action involving the same
parties, facts, and circumstances as the Trademark PDDRP was instituted before
the Complaint filing date in the Trademark PDDRP, the Provider shall suspend
or terminate the Trademark PDDRP91.
Moreover, in some mechanisms, ICANN kept the door open before the pos-
sible compensation to any possible infringing trigged by any stakeholder, includ-
ing the registry operator. For instance, at TM PDDRP, ICANN indicated there
“Nothing prohibits ICANN from imposing remedies at any time and of any nature
it is otherwise entitled to impose for a registry operator’s non-compliance with its
Registry Agreement.”92. The author believes that if ICANN has embedded the
monetary penalties and compensation within its mechanism, it will make it very
independent, flexible meeting the requisites of the stakeholders in Cyberspace.
Furthermore, it gives these mechanisms huge momenta and makes them more
practical than the court approach.

REFERENCES

Abbott, Frederick M., Thomas Cottier, and Francis Gurry. 2019. International Intel-
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Chew, Justine. 2020. “UPDATE & CONSULTATION ON New GTLD Subsequent
Procedures Consensus Building on Recommendations OBJECTIONS (V13).”
Https://Community.Icann.Org/Download/Attachments/111390697/13. SubPro

90 ibid art., 18.3.1.


91 REG-TMPDDRP, Art. 22.2
92 Ibid Art. 21.5 .

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Objections as of 25.08.2020 for CPWG . ICANN. August 25, 2020. https://com-


munity.icann.org/download/attachments/111390697/13.SubProObjectionsasat­
25.08.2020forCPWG.
Crain, Michael A., William S. Hopwood, Richard S. Gendler, George R. Young, and
Carl Pacini. 2019. Essentials of Forensic Accounting. 2nd ed. John Wiley & Sons.
Hess, Burkhard, Maria Bergström, and Eva Storskrubb. 2016. EU Civil Justice: Current
Issues and Future Outlook. 1st ed. UK: , Hart Publishing.
ICANN. 2012. “GTLD Applicant Guidebook (v. 2012-06-04) Module 3.” http://new-
gtlds.icann.org/en/applicants/agb/objection-procedures-04jun12-en.pdf.
McElwaine, John , and Christopher D. Casavale. 2019. Tackling Bad Faith Registra-
tion of Domain Names in a Fast-Changing Landscape. Edited by Catherine
Jewell. WIPO Magazine . Vol. 121 of WIPO Publication. Geneva : WIPO. https://
books.google.hu/books?id=MlfSDwAAQBAJ.
Miller, Roger. 2021. Business Law Today, The Essentials: Text and Summarized Cases.
Cengage Learning USA.
Murray, Andrew. 2019. Information Technology Law: The Law and Society. 4th ed.
UK: Oxford University Press.
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Torsten Bettinger, and Bernard Hanotiau. n.d. Sarah Theurich, La Résolution
Des Litiges de Propriété Intellectuelle / Resolution of Intellectual Property
Disputes. Publisher Université de Genève, Genève,2010.
Pouryousef, Shahrooz, Muhammad Daniyal Dar, Suleman Ahmad, Phillipa Gill, and
Rishab Nithyanand. 2020. “Extortion or Expansion? An Investigation into the
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Measurement: 21st International Conference, edited by Anna Sperotto, Alberto
Dainotti, and Burkhard Stiller, 12048 of LNCS sublibrary: Computer commu-
nication networks and telecommunications:147. Switzerland: Springer Nature.
Rosén, Jan. 2012. Individualism and Collectiveness in Intellectual Property Law. 1st ed.
Cheltenham, UK: Edward Elgar Publishing.
Sandberg, Bobbi. 2015. Networking The Complete Reference. 3rd ed. McGraw Hill
Professional.
Seufer, Luc. 2019. “The Next Round Of GTLDs Is Around The Corner.” EBRAND.
August 9, 2019. https://ebrandservices.com/the-next-round-of-gtlds-is-around-
the-corner/.
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bridge University Press.
Warf, Barney. 2018. The SAGE Encyclopedia of the Internet. 18th ed. uk: SAGE.
WIPO WORLD INTELLECTUAL PROPERTY ORGANIZATION. 2017. “Standing
Committee on the Law of Trademarks, Industrial Designs and Geographical
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WORLD INTELECTUAL ORGANIZATION. n.d. “Frequently Asked Questions.”


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Fahed А. Wahdani, ICANN Mechanisms: Extra Remedies Evaluation (317–336)

Фаед А. Вахдани
Студент докторских студија
Универзитет у Дебрецину
Правни факултет
[email protected]

ICANN механизми: процена додатних правних средстава

Сажетак: Удруживањем са Светском организацијом за интелектуалну


својину, ICANN је креирала административне механизме за решавање спор­
них назива домена и других права у вези са коришћењем жигова у сајбер про­
стору. У овом контексту, овај механизам под називом UDRP био је ограничен
на опште називе домена првог нивоа јер су на самом почетку светске мреже
сукоби у основи били окружени ланцима назива домена као што су .com,
.org, .net са високом тржишном вредношћу. Поврх тога, пошто је растућа
по­тражња у индустрији назива домена била огромна, ICANN настоји да
пумпа нове ланце назива домена на тржиште како би одговорила на тако
ра­стућу потражњу за називима домена. Сходно томе, овај корак је повећао
сукоб, док је механизам UDRP био ограничен на решавање сукоба око назива
до­мена првог нивоа. С тим у вези, ACANN је морао да пронађе други механи­зам
за решавање других сукоба повезаних са новим gTLD. Овај чланак на­стоји
да расветли ова правна средства и њихову ефикасност у решавању таквих
сукоба.
Кључне речи: RPMs, gTLDs, UDRP, Називи домена, Жиг.

Датум пријема рада: 05.07.2021.


Датум достављања коначне верзије рада: 30.03.2022.
Датум прихватања рада: 09.06.2022.

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