Advisory: Key Topics To Follow During The ICANN 65 Policy Forum Meeting

The 65th international meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) commences June 24, 2019, in Marrakech, Morocco. ICANN holds three international meetings per year, which rotate among five geographic regions and three meeting formats with different subject areas of focus. The Marrakech meeting is the policy forum meeting, the truncated format limited strictly to ICANN policy matters, including ongoing formal policy development initiatives, as well as a number of cross-community discussions on key policy issues of broad interest. Please note that all key sessions identified below reflect local time in Marrakech, and are subject to change. This advisory highlights several high-profile topics that have emerged amid community discussions in the lead-up to this meeting, and which we anticipate will command the majority of attention during ICANN 65.

Access to Domain Name Registration Data
The impact of the European General Data Protection Regulation (GDPR) on the “WHOIS” system of domain name registration data remains one of the most critical issues in Internet policy affecting intellectual property owners.  Since the May 2018 adoption by ICANN of a temporary policy on WHOIS system compliance with GDPR, critical domain registration data has remained inaccessible to the public, including law enforcement, cybersecurity professionals, and intellectual property practitioners. Since the adoption of the temporary policy, a special working group of stakeholder representatives (the Expedited Policy Development Process Working Group, or “EPDP”) has been developing a permanent consensus policy on domain name registration data.  Having completed its “phase one” work stream in March 2019, the EPDP has now turned much of its attention to the critical issue of developing a unified system for accessing non-public WHOIS data based on the legitimate interests of certain parties, including intellectual owners.

Meanwhile, however, with ICANN Board having adopted 27 of the 29 Recommendations of the EPDP Phase 1 Final Report, an EPDP Phase 1 policy implementation team will also kick off at ICANN 65. The meeting will also include discussions regarding the two Phase 1 recommendations that were not adopted by the Board, relating to purposes for processing of domain name registration data (which need to be fleshed out in more explicit detail) and voluntary publication of the registrant organization field.    

Key ICANN 65 Sessions
•    GNSO – EPDP Phase 2 Meeting (1 of 2) (Tues June 25, 8:30 am to 3:00 pm)
•    GAC: WHOIS and Data Protection Policy (Wed June 26, 9:00 to 10:15 am)
•    GNSO Registration Data Policy Implementation IRT (Wed June 26, 10:30 am to 12:00 pm)
•    GNSO – EPDP Phase 2 Meeting (2 of 2) (Thurs June 27, 8:30 am to 3:00 pm)
•    Impacts of EPDP Phase 1 Recommendations on Other ICANN Policies & Procedures (Thurs June 27, 3:15 pm to 4:45 pm)

Rights Protection Mechanism Review
The Rights Protection Mechanism (RPM) Review Working Group (WG) continues to make incremental progress in its ongoing evaluation of the Trademark Claims and Sunrise mechanisms.
The WG has reached preliminary conclusions and developed preliminary recommendations on a number of issues relating to Claims and Sunrise, although a number of key issues have not yet been settled.  For example, discussions continue as to whether matching rules for Trademark Claims should be expanded.  Currently, only exact matches of trademarks recorded in the Trademark Clearinghouse trigger Claims notices.  Several proposals have been socialized within the WG to expand this rule to include non-exact matches, such as any domain containing the mark, or mark plus certain key terms – proposals that brand owners in the WG have strongly supported, given the overarching trademark infringement test based on likelihood of confusion.  In addition, discussions continue regarding various proposals aimed at addressing circumvention of Sunrise via registry pricing and reserved names practices, as well as a proposal strongly opposed by brand owners to limit the availability of Sunrise registrations to TLDs relevant to the goods and services of the mark.  These matters are likely to be the focus of WG discussions in Marrakech.

The WG’s Initial Report covering all new gTLD program RPMs – Trademark Clearinghouse, Sunrise, Trademark Claims, and Uniform Rapid Suspension (URS) – is now anticipated for publication by April 2020 – substantially delayed from earlier timelines projecting completion by the end of Q2 of 2019. Finally, the vital review of the UDRP also remains on the horizon, now likely to begin in mid-2020 at the earliest.

Key ICANN 65 Sessions
•    Review of all Rights Protection Mechanisms in gTLDs PDP WG (1 of 4) (Tues June 25, 10:30 am to 12:00 pm)
•    Review of all Rights Protection Mechanisms in gTLDs PDP WG (2 of 4) (Tues June 25, 1:00 pm to 3:00 pm)
•    GAC: GNSO / GAC Dialogue on IGO Protections and Preparation for Meeting with the ICANN Board (Tues June 25, 1:30 pm to 3:00 pm)
•    Review of all Rights Protection Mechanisms in gTLDs PDP WG (3 of 4) (Thurs June 27, 8:30 am to 10:15 am)
•    Review of all Rights Protection Mechanisms in gTLDs PDP WG (4 of 4) (Thurs June 27, 10:30 am to 12:00 pm)

Geographic Names Issues
The New gTLD Subsequent Procedures Working Group – Work Track 5 continues to debate possible changes to the rules and requirements concerning the use of terms with geographical significance as future new gTLDs.
The Work Track remains focused on reviewing public comments on its Initial Report and identifying areas of general agreement, divergence, and possible new ideas with respect to the various topics within the scope of Work Track 5, including use of two- and three-letter names that match country codes, long and short-form country and territory names, UNESCO region names, capital and non-capital city names, and sub-national place names.  In general, support and divergence on these issues portend either favorable consensus aligned with trademark owner positions, or a lack of any clear consensus that would result in preserving the status quo.  
Finally, while the ICANN Board has recently appeared to at long last approve the delegation of the .AMAZON gTLD, disgruntled members of the ICANN Governmental Advisory Committee (GAC) continue to discuss the matter and it will be on the GAC agenda for ICANN 65.    

Key ICANN 65 Sessions
•    GAC: Two Character Country Codes Discussion (Mon June 24, 11:30 am to 12:30 pm)
•    GAC: DNS Abuse Mitigation and dot Amazon Discussions (Tues June 25, 8:30 am to 10:15 am)

Other New gTLD Subsequent Procedures Issues
The New gTLD Subsequent Procedures Working Group (SubPro) continues to evaluate areas of consensus on a number of key issues.  For instance, SubPro has confirmed general support for the recommendation to continue to use the Applicant Guidebook (AGB) with additional updates including improvements to ensure easier understanding for the general public for new gTLD applications and provide more practical user examples and application searchability, as well as more specific guidance with respect to different application types (e.g. .Brand TLDs).
The SubPro Final Report is also expected to encapsulate various procedural efficiencies, such as secure single sign-on to upload and manage multiple applications through a single portal, longer timeframes between AGB finalization until the start of application acceptance, escalation paths for applicant communications with real-time applicant support from ICANN, and greater educational outreach regarding universal acceptance issues (the ability of new gTLD extensions to be recognized by various technological protocols such as Internet browsers, mobile apps, and email systems), among a number of others.  The forthcoming new gTLD launch is also expected to occur in a more favorable series of discrete application and evaluation rounds, rather than a single ongoing application and launch process that would have resulted in a greater burden on the Internet community to constantly monitor new applications and always be prepared to object or challenge problematic applications.  Overall, these represent sensible improvements and approaches that the brand owner community, and in particular potential future .Brand applicants, support.  
While the brand community overwhelmingly prefers to minimize the number of new gTLDs as new spaces for online counterfeiting, infringement, and other abuse, it remains important to set reasonable rules for future application rounds. This will ensure fair and efficient processing, including appropriate evaluation and objection mechanisms (including legal rights objections and string confusion objections to avoid new gTLDs that may be confusingly similar to third-party trademarks and .Brand TLD strings), as well as less onerous rules and requirements for future .Brand TLD operators to ensure greater participation by the brand community in the gTLD expansion, which also facilitates anti-counterfeiting and brand protection by providing dedicated online spaces for legitimate products and services by brand owners.
SubPro is expected to complete its Final Report by the end of Q1 2020, with substantial discussions on outstanding issues expected to take place during ICANN 65, as well as ICANN 66 in November 2019.  

Key ICANN 65 Sessions
•    New gTLD Subsequent Procedures PDP WG (1 of 4) (Mon June 24, 9:00 am to 10:15 am)
•    New gTLD Subsequent Procedures PDP WG (2 of 4) (Mon  June 24, 10:30 am to 12:00 pm)
•    New gTLD Subsequent Procedures PDP WG (3 of 4) (Mon June 24, 1:30 pm to 3:00 pm)
•    GAC: New gTLD Subsequent Procedures Discussion (Mon June 24, 3:15 to 4:15 pm)
•    New gTLD Subsequent Procedures PDP WG (4 of 4) (Tues June 25, 8:30 to 10:15 am)
•    GAC: Meeting with Universal Acceptance Steering Group and GAC Subsequent Round of  gTLDs Next Steps Discussion (Thurs June 27, 1:30 pm to 3:00 pm)

We hope that this advisory provides you with unique insight into several major areas of impact and interest for brand owners in the Internet policy space, and highlights why brand owners should be involved in and aware of ICANN policy-making efforts. The ICANN 65 meeting will take place from June 24 – 27, 2019. A link to the full meeting schedule is available here.

For more information about these topics, please contact any of the following team members. In addition, our team will be available to provide on-the-ground, daily coverage of key meeting sessions. If you are interested in receiving our Eye on ICANN reports, or in-depth coverage of particular sessions of interest, please contact us aticann@winterfeldt.law.

 

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