INTA Internet Committee: Playing the Long Game

21-05-2017

The new gTLDs and the challenges they pose for trademark owners are keeping INTA’s Internet Committee busy. Sarah Morgan talks to the Committee’s Chair and Vice Chair, John McElwaine and Paul McGrady, and INTA Senior Director of Internet Policy Lori Schulman, to find out more.

Cybersquatting, online counterfeiting, and phishing are just three of the major enforcement challenges on the Internet.

“It is so easy to launch new sites that even when we have success at shutting down bad ones, replacements pop up almost immediately,” explains Lori Schulman, INTA’s Senior Director of Internet Policy.

Although cybersquatting has always been a problem, the scale of the new generic top-level domain (gTLD) program has given cybersquatters more opportunities to procure names than ever before.

John McElwaine, Chair of INTA’s Internet Committee, says: “In addition to run-of-the-mill cybersquatting, there are other types of mischief in the new program, such as the introduction of .sucks and .feedback.”

Ms. Schulman concurs, adding that brand owners are not only concerned about cybersquatting but also about names being reserved by registries before they are offered to the public, and brand owners being offered their own trademarks as part of domains for prices that are far above market price.

The number of Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaints filed has also ticked up with the introduction of 1,200 new gTLDs, adds Paul McGrady, Vice Chair of the Internet Committee.

“Behind every UDRP complaint there are probably ten demand letters that have been resolved informally. We’re not hearing from our members that the new program has lessened their burden or lightened their budget. We’re hearing the opposite,” says Mr. McGrady.

That’s not to say the UDRP has not been a remarkable success, he adds, explaining that the policy has provided a safety valve that otherwise would have boiled over into endless litigation.

“While the UDRP has been a good reactive mechanism, there’s nothing proactive that prohibits cybersquatting. There’s room to enhance the mechanism in an attempt to cut down the number of infringements.”

Mr. McElwaine agrees, stating that the UDRP is working well, but it’s only addressing a slice of what’s going on and there can always be improvements when dealing with protecting consumers’ and brand owners’ interests.

To calculate the real cost to its members of the introduction of 1,200 new gTLDs, INTA is assisting the Internet Corporation for Assigned Names and Numbers (ICANN) with a study looking at the costs and impact of the program.

“I’ve always said that because of the cost of dealing with cybersquatters, the branding community has been asked to underwrite the domain name industry,” says Mr. McGrady, adding that he is looking forward to the results of the survey, to see whether it supports his hypothesis.

A Multifaceted Approach

The next challenge for the Committee concerns examining all the rights protection mechanisms (RPMs) covering the new gTLDs.

All RPMs including the UDRP are under review by ICANN, and the Committee’s goal is to advocate for improvements where it can, while also ensuring that hard-fought-protections are not eroded by opening up issues that were resolved long ago.

INTA is taking a multifaceted approach to the reviews, working with other international organizations that have a stake in protecting brand owners’ interests.

There’s now an entire subcommittee—the RPM Review Subcommittee—that looks solely at the topic.

“The importance of these reviews cannot be overstated,” explains Mr. McGrady.

“Whether we strengthen consumer protection or we lose ground will affect consumers and the budgets of our members. If we lose ground our members will have to pour even more resources into stopping people who want to use the Internet to commit fraud,” he says.

The Committee also has to be careful to avoid the risk of ‘volunteer fatigue’, given the volume and pace of ICANN’s many review and policy development process working groups, says Ms. Schulman.

This term has been busy—the Committee has increased the breadth of its coverage and what used to be four or five Subcommittees has transformed into 11 of them.

Each Subcommittee operates independently, with every Chair being given the opportunity to set their own goals and adjust them as necessary.

“It’s not so much about chalking up the wins; we’re playing the long game. Some of the projects such as the RPM review can take more than two years,” says Mr. McElwaine.

Representation is Key

The main achievement this term, according to Mr. McGrady, is the development of INTA’s independent voice in the Web arena and communicating the concerns of tens of thousands of members in a more direct fashion, not just through public comments.

One of the Committee’s core objectives is focusing on the representation of trademark owners’ interests in the multistakeholder policy process at ICANN.

In October last year, ICANN’s contract with the U.S. Department of Commerce, National Telecommunications and Information Agency to perform the Internet Assigned Numbers Authority (IANA) functions ended. ICANN is now overseen by a multistakeholder community.

“There were intense days of negotiation and truncated comment periods that made fashioning coherent responses very challenging,” says Ms. Schulman, who adds that she is particularly proud of the Internet Committee’s rapid response to the transition.

The Committee sometimes had turnaround periods of 48 hours or less to review, analyze, and form a response to proposed accountability measures that were critical to brand owners, she explains.  

INTA was one of only a few organizations whose comments were incorporated into ICANN’s final by-laws, and it’s still intensely engaged in work on reforming ICANN’s internal processes to ensure transparency, predictability, and accountability.

According to Mr. McGrady, one of the reasons the Committee is so big is because there’s so much work to be done within ICANN to protect consumers.

“Our volunteers are just as committed to making the Internet a safe place as those who are committed to making it unsafe,” he adds.

The Committee represents trademark owners’ interests in the multistakeholder policy process at ICANN.

But, Mr. McGrady adds, the Association is specifically talking consumer protection:

“Trademarks found in domain names lead either to the safety of a genuine website or to a fraudulent website.”

The bulk of the Internet Committee’s work focuses on ICANN, says Ms. Schulman, as that’s where it can most directly affect contract provisions and policy guidelines when it comes to delegating and administering domain names at the top and second levels.

But that’s not all—INTA has expanded its involvement in Internet governance across the globe by contributing to the Internet Governance Forum (IGF), the World Summit on the Information Society (WSIS), and IGF-USA programs. 

The global IGF and WSIS are United Nations initiatives that look at Internet governance from a global, public policy perspective.

Keeping an Eye on the Future

“We don’t know what the future holds but one of the important things we’ve done is try to understand all the different actors and policy-making bodies that will shape the future of IP on the Internet,” says Mr. McElwaine.

INTA is keeping close eye on what is happening on social media platforms and mobile applications.  

The Internet Committee recently updated its directory of social media policies and encourages all INTA members to look at these policies, which outline the voluntary efforts that social media platforms are undertaking to ensure proper trademark use, and address possible abuse, on their sites.

Along with the IANA transition and RPM review, the Subsequent Procedures Working Group is considering how the next round of new gTLD applications will be handled. 

“We want to make sure that further delegations take into consideration any roadblocks that were identified in the first round,” says Ms. Schulman.

This would include how geographic names are considered and whether the applications should be batched in rounds or considered on a rolling basis.

“The Internet has always been a challenge for IP owners, mostly on the infringement and cybersquatting side,” adds Mr. McGrady.

“Industries which are fully or at least mostly dependent on the Web for delivery of their product bore the brunt in terms of trust for the early Internet,” he says.

But with the emergence of new technologies, a new group of brand owners that have been substantially protected in the past are being pulled into the infringement front line.

Mr. McGrady provides the example of 3D printing: “If you’re buying flame-retardant pyjamas from Walmart, you can trust the retailer and the brand. Now imagine a world where you can use a 3D printer to create pyjamas you believe come from a trusted manufacturer, but don’t.

“Our fight is far from over—this is just the warm-up round.” 

Internet, Committee, gTLDs, John McElwaine, Paul McGrady, INTA Senior Director of Internet Policy, Lori Schulman,

WIPR