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A Tribute to the STI (Special Trademarks Initiative Team)

In the ICANN world, our relations are often a little tumultuous, as policy-making bodies can be. As I look back on my experiences over the last decade at ICANN (and many committees, working groups and task forces), one stands out for its quality, dedication, professionalism and hard work. That’s the Special Trademarks Initiatives Working Team, or the STI. I was proud to be a part of the Team as an Non-Commercial Stakeholders Group (NCSG) representative, and this tribute reflects my high regard for the Team and the recommendations it produced.

The STI was a Generic Names Supporting Organization (GNSO) group organized in response to the IRT (the Implementation Recommendation Team). The IRT Report was created by senior trademark attorneys who came together to make recommendations on how to strengthen the protection of intellectual property in the new generic Top-Level Domains (gTLDs). While it may be fair that they did so, the IRT drew overwhelmingly from one constituency, the Intellectual Property Constituency, with one representative from two other constituencies, and none from the others. When the IRT delivered its report to the ICANN Community in Sydney, June 2009, objections were loud and deep, as much on procedural as substantive grounds. Could (or should) one constituency be allowed to dominate and get unlimited weight in a policy-making process?

The GNSO is intended to be a balanced community dedicated to grassroots policy-making efforts. All Stakeholder Groups and constituencies have a voice, and policy is to be designed with all parties in mind: intellectual property and business, noncommercial and individual, registries, registrars and service providers. The Board of ICANN chose to act—and the IRT Report was not rejected, but passed to the whole of the GNSO Community to review and evaluate.

Thus, the Special Trademarks Initiative Working Team (the STI) was created at the ICANN Meeting in Seoul, late October 2009, and given a mere six short weeks for its work. It worked hard with the IRT recommendations, and accepted most of them, but it tweaked them with an eye and a concern for all parties: those filing the complaints, those responding to the complaints, and those implementing the procedures (e.g., registries and registrars). I believe the recommendations reflected a balanced perspective, the essence of the GNSO view.

The STI agreed to accept the vast majority of the IRT recommendations, in particular:

  • The Trademark Clearinghouse: an efficiency mechanism to provide immense time and cost savings for trademark owners by allowing them (for the first time ever) to register their trademark in one location, rather than with each New gTLD Registry, and require all new gTLDs to use the one Clearinghouse; and
  • The Uniform Rapid Suspension system: a rapid takedown process for those “slam-dunk” cases in which the domain name registrant was undeniably trying to register someone else’s trademark; and

The STI came to these recommendations with new perspectives and raised new issues, adding procedures intended to introduce more fairness and balance. Basic questions were asked: Were the principles clear? Were the procedures balanced? Were the outcomes likely to be seen as fair?

These are the issues on which the STI focused. Thus, the response time for the URS was extended to 20 days—the minimum time the majority of team members believed this was needed if an individual registrant were to need to translate the URS notice into another language, find someone to counsel him/her on domain name law, and prepare a response. As a balance, the decision time was cut from the weeks allowed by the UDRP process to a mere 3 business days, so that the decision would be fast to the trademark owner. The result is a URS process which was far faster than the vast majority of UDRP proceedings, yet fair to both sides. The STI considered that a win, a notable improvement.

I’ve heard rumors of adversarial relationships with the IPC, but I have never worked closer with my IPC colleagues than when I was in the STI. During our six week term, I worked often with everyone in the group, but especially the IPC and Business representatives. Together we carefully drafted many sections, including:

  • The Trademark Claims Notice (in a manner clear and fair to both sides);
  • The URS Examination Instructions; and
  • The URS Standard of Review.

Overall, I hold the STI group in great esteem. It brought great expertise to the process, including years of trademark and domain name dispute experience (on both sides), academics and treatise writers in the domain name area, registries who had drafted and implemented sunrise procedures, and representatives from an array of countries. We all worked hard; we had excellent guidance under our Chair David Maher, we were all dedicated to our own groups, and our common cause. We took the IRT, accepted the majority of its principles, and took them several steps forward.

My thanks and acknowledgements to the STI Working Team for the most constructive, positive and far-seeing team that I have ever been a part of in the ICANN process!

The STI Working Team* (2009)
David Maher (Chair), RySG**
Jeff Neuman, RySG
Alan Greenberg, ALAC
Olivier Crépin-Leblond ALAC (Alternate)
Paul McGrady IPC, CSG
Mark Partridge IPC, CSG
Kristina Rosette IPC, CSG (Alternate)
Jeff Eckhaus Rr SG
Jon Nevett Rr SG
Jean-Christophe Vignes Rr (Alternate)
Mike Rodenbaugh BCUC, CSG (Alternate)
Zahid Jamil BCUC, CSG
Robin Gross NCSG
Kathy Kleiman NCSG
Wendy Seltzer NCSG
Konstantinos Komaitis NCSG
Mary Wong NCSG (Alternate)
Leslie Guanyuan NCSG (Alternate)
Tony Harris ISP Constituency, CSG
Andrei Kolesnikov NCA
Maimouna Diop GAC Observer

* From the STI Review Team Recommendations which can be found here.
** RySG = Registries Stakeholder Group; ALAC= At-Large Advisory Committee; IPC= Intellectual Property Constituency; CSG= Commercial Stakeholder Group; RrSG= Registrars Stakeholder Group; BCUC = Business and Commercial Users Constituency; NCSG= Noncommercial Stakeholders Group; GAC = Government Advisory Committee.

By Kathy Kleiman, American University Washington College of Law

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The ICANN Board then went and cut George Kirikos  –  Feb 22, 2011 7:56 PM

The ICANN Board then went and cut the URS response time from 20 days to 14 days. Where were the comments from the STI and/or its individual members in blasting that decision, which will hurt legitimate registrants? Nowhere. Indeed, some worked to reverse those “achievements”, pushing for the IRT recommendations, either directly or via their constituencies.

The proper length of time to respond should have been a function of the age of the domain name (e.g. 14 days + 5 days x domain age in years; so, a 10 year old domain registrant would have a lot longer to respond than a 1 week old domain registrant.

George,I was not part of the STI Patrick Vande Walle  –  Feb 22, 2011 9:23 PM

George, I was not part of the STI WG, but provided input from the ALAC side. With regard to the fourth DAG, I commented on this particular issue, and so did the ALAC. Response time is only one factor. My main fear is that the domain name registrant may not get the URS notice at all, because it will not get past his/her spam filter. Additionally, international postal mail is slow. The domain name registrant might not get the hard copy delivered on time either: there is no requirement on the URS provider to use express carriers with a guaranteed delivery time.

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