Icann Mechanisms
Icann Mechanisms
Icann Mechanisms
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)
1. INTRODUCTION
1 Roger Miller ,Business Law Today, The Essentials: Text and Summarized Cases Cengage
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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.
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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
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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?
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.
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
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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
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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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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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.
– T. Pistorius 38.
61 F. Abbott, T. Cottier, F. Gurry 551.
62 Mark Jeftovic, Managing Mission – Critical Domains and DNS: Demystifying nameservers,
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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.
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.
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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.
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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.
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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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?
3.2. 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-
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REFERENCES
Abbott, Frederick M., Thomas Cottier, and Francis Gurry. 2019. International Intel-
lectual Property in an Integrated World Economy. 4th ed. New York, USA:
Wolters Kluwer.
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
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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]
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