[A2k] ccTLDs & the TPP

Susan Chalmers susan at susanchalmers.com
Tue Feb 18 00:19:56 PST 2014


Greetings,

For those interested in the TPP, I've posted some
thoughts<http://www.susanchalmers.com>on how ccTLDs are involved
through the trademarks section.

Note that this post focuses less on substantive IP issues and more on the
appropriateness of creating a new regulatory sphere for ccTLDs, in general
and specifically in a trade agreement.

Grateful as always for discussion.

Sincerely,
Susan

-- 
Susan Chalmers
Consultant, Internet Policy

+1 269 324 4101
www.susanchalmers.com


Where policy fora collide: country-code Top-Level Domains and the Trans
Pacific Partnership
agreement<http://www.susanchalmers.com/writings/2014/1/30/where-policy-fora-collide-cctlds-and-the-tpp>
FEBRUARY 18, 2014<http://www.susanchalmers.com/writings/2014/1/30/where-policy-fora-collide-cctlds-and-the-tpp>

To those familiar with the United States' approach to intellectual property
rights ("IP") and trade policy, it will come as no surprise that the US is
pressing other countries to give IP owners more in the Trans Pacific
Partnership Agreement ("TPP"), that is, more powerful economic rights and
more power to enforce them.

Some, however, may be surprised by one way in which the United States Trade
Representative ("USTR") is angling to satisfy this aim through the TPP.

In the section of the TPP text that addresses trademarks, there is a
provision titled *Domain names and the Internet *(the "Provision"). The
effect of the Provision would be to establish uniform standards for a group
whose non-uniformity is widely recognised and accepted: country-code
Top-Level Domain managers ("ccTLDs").

Below I explain why the Provision should not be included in the TPP, based
on principle, but I do acknowledge that at least two thirds of it will be.
Then I point out why the remaining third of the Provision should be
rejected.

There is surprisingly little written on this issue. The primary motivation
behind this article is to generate public discussion on the matter before
negotiations conclude.
A bit of BackgroundOn ccTLDs

A ccTLD is "an Internet top-level domain generally used or reserved for
a country, a sovereign state, or a dependent territory," for example .nz
for New Zealand or .cl for Chile. [1] There are 246 of them. These two
letter domains come from the ISO-3166
<http://www.iso.org/iso/country_codes> country
code list, and the institutions that manage them range from governmental to
academic, commercial to non-profit, to management by an individual, and
different shades in between. Initial delegations of ccTLDs were made in the
1980s and 1990s, generally to individuals connected to the Internet, often
University personnel. ccTLD managers determine their own policies,
"according to the relevant oversight and governance mechanisms within
the[ir] country," territory or geographical location.[2]

ccTLDs enjoy relative autonomy in developing the policies for the domains
that they manage. For example, ICANN, the organisation that coordinates and
manages the Internet's domain name system, requires all generic top-level
domain managers ("gTLDs"), for example .com, .net, and .org, to resolve
domain name disputes according to the Uniform Domain Name Dispute
Resolution Policy ("UDRP"). (For an example of a domain name dispute, click
here<http://www.domainpulse.com/2009/04/13/jennifer-lopez-wins-cybersquatting-case/>
.)

For ccTLDs, however, use of the UDRP is optional. They can use something
different if they want, or choose to not have a dispute resolution policy
at all, sending complainants in the direction of the court instead. A
document called RFC 1591 <http://www.ietf.org/rfc/rfc1591.txt> is widely
accepted by the ccTLD community as a sort of guidance touchstone,
describing what they do and how they should operate.
On the TPP

The United States Congressional Research Service describes the TPP as the
"leading trade policy initiative of the Obama Administration, and...a
manifestation of the Administration's "pivot" to Asia. If concluded, it may
serve to shape the economic architecture of the Asia-Pacific region by
harmonizing existing agreements with U.S. [free trade agreement] partners,
attracting new participants, and establishing regional rules on new policy
issues facing the global economy--possibly providing impetus to future
multilateral liberalization under the WTO."[3]

There are 12 countries currently negotiating. Negotiations are conducted in
private and the text is confidential, but the Intellectual Property Rights
chapter, in which the Provision is found, has been leaked on a number of
occasions. The text I provide here is from the most recent leak, which
occurred in late 2013.

Below I address the Provision in some detail, but first I'd like to offer
some thoughts on involving ccTLDs in the TPP, in general.
The basic problem: collision of policy fora

*Fluid (ccTLD) versus Fixed (TPP)*

Subjugating a ccTLD to a plurilateral trade agreement is problematic. As a
matter of principle, ccTLDs should decide themselves what their policies
are and have the flexibility to determine how and when those policies
should be modified, in a regulatory environment marked by fluidity that
allows individual ccTLDs to respond best to the needs of their particular
community.

The TPP however would fix regulatory parameters, and limit the flexibility
of the ccTLD in developing its own policies. By and through the Provision,
the TPP collides with other ccTLD policy fora. It sets enforceable
standards for ccTLD policies where such standards may not otherwise exist,
or where the standards clash with pre-existing policy. Whereas the ccTLD
will have previously enjoyed the liberty of developing its policies in
light of RFC 1591 and according to the needs of its own community, or in
line with best practices developed at the ccNSO, for example, it will be
prevented from doing so if those changes conflict with TPP requirements.
Lest we forget that such requirements may come about not out of
consideration for what is best for ccTLD management, but as a result of a
trade. Countries' concessions on IP issues may come as a result, for
example, of their desire to export more sugar or beef to US markets.

The most basic illustration of different standards is with respect to
dispute resolution. RFC 1591 explains that when it comes to dispute
resolution, all ccTLDs need do is provide contact information to the
parties at odds.[4] Contrast this basic standard with what is required by
the TPP in Section 1(a) - the establishment of a dispute resolution
procedure specific to trademark cyberpiracy - which is discussed below.

Proponents of the provision might point out that since ccTLDs have the
flexibility to decide their own policies, then they have the flexibility to
agree to the TPP terms. It is important to keep in mind, however, that not
all ccTLDs are organs of their government. A country's position on the
Provision could very well be inconsistent with that of the ccTLD.
Non-governmental ccTLD managers could find their policies in conflict with
those terms to which their government has agreed. The ccTLD's policy
development autonomy could be lost as it is directed, through legislation
or otherwise, to revise its policies into harmony with the TPP.

Nonetheless, US free trade agreements ("FTAs") have already obligated five
of the 12 negotiating countries to at least part of the Provision. For all
intents and purposes, this means that all others will likely have to agree
to the same. For better or worse, ccTLDs are involved in US FTAs.

As I explain below, this involvement shouldn't expand beyond that which is
required by previous FTAs.
The Provision

The US has FTAs in force with 20 countries, 16 of which have agreed to
language that tracks section 1 of the Provision ("S1").  Five out of 12 TPP
countries are already bound by S1 language - Australia, Chile, Peru,
Singapore, and the United States. Section 2 of the Provision ("S2") does
not appear in any previous US FTAs. It is new for everyone which,
practically speaking, means that it is the only part of the Provision that
can plausibly be removed now, and not included within the final text.
Three parts or purposes

The Provision to serves three purposes, two of which make sense to me, one
of which does not.

   1.     S1(a) basically asks that the countries ensure that their ccTLD
   has a dispute resolution policy.
   2.     S1(b) would have the countries ensure that their ccTLD maintain a
   WHOIS<http://www.icann.org/en/resources/compliance/complaints/whois/search>,
   or a searchable database of domain name registration information.
   3.     S2 would require the countries to provide remedies for "trademark
   cyberpiracy."

The latest available language reads:

*1. In order to address the problem of trademark [VN/MX propose:
geographical indication and trade name] cyber-piracy, each Party shall
adopt or maintain a system for the management of its country-code top-level
domain (ccTLD) that provides:*

*(a) an appropriate procedure for the settlement of disputes, based on, or
modelled along the same lines as, the principles established in the Uniform
Domain-Name Dispute-Resolution Policy, or that is:*

*(i) designed to resolve disputes expeditiously and at low cost,*

*(ii) fair and equitable,*

*(iii) not overly burdensome, and*

*(iv) does not preclude resort to court litigation;*

*(b) online public access to a reliable and accurate database of contact
information concerning domain-name registrants; in accordance with each
Party's laws regarding protection of privacy and personal data.*

*2. [PE/SG/CL/AU/NZ/MY/BN/CA oppose; US/VN/JP/MX propose: Each party shall
provide [VN: oppose adequate and effective] [VN propose: appropriate]
remedies against the registration trafficking or use in any ccTLD, with a
bad faith intent to profit, of a domain name that is identical or
confusingly similar to a trademark [VN/MX propose: , geographical
indication or trade name].]*

[footnotes omitted]
On Section 1

S1 has two purposes - first to ensure that ccTLDs have a dispute resolution
policy for "trademark cyberpiracy" in place, and second, a WHOIS. For most
ccTLDs, these requirements, on their face, should not pose much of a
problem.

Whilst S1(a) mentions the Uniform Domain Name Dispute Resolution Policy by
name, the Provision wouldn't force ccTLDs to adopt the UDRP wholesale and
verbatim; it features a set of four principles that the ccTLD's policy must
honour. So long as the policy does this, its details are unimportant. These
principles are new and an improvement upon the language of the past 16
iterations of the Provision in US FTAs. They should afford ccTLDs ample
latitude to craft a policy that responds to local concerns. It could be
worse.

S1(b) also improves upon past language of certain FTAs. Australia, Bahrain,
Columbia, Korea, Morocco, Oman, Peru and Singapore have agreed to ensure
that their ccTLDs will maintain a WHOIS, but these FTAs do not acknowledge
domestic privacy and/or personal data protection regulatory frameworks.
FTAs with Panama, Nicaragua, Honduras, Guatemala, the Dominican Republic,
Costa Rica, and El Salvador require ccTLDs to have a WHOIS that can be
designed subject to the country's law protecting the privacy of nationals.
For Chile, it is the law on protection of personal data. In the TPP, both
privacy and personal data protection can be taken into account by the ccTLD
when crafting their WHOIS.

Even so, however, for those ccTLD managers who do not have a formal
relationship with the government, this section could provoke uncomfortable
discussions about whether their approach to WHOIS meets the requirements of
the TPP.
On Section 2

As stated above, S2 is new. It would require countries to provide "remedies
against registration trafficking or use" of a ccTLD domain name that is
identical or confusingly similar to a trademark. A bad faith intent to
profit is required.

It is not entirely clear what this section seeks to achieve, and how ccTLD
managers would be affected by it. Presumably, the dispute resolution policy
required in S1 would provide effective remedies. Ergo, what extra problem
does S2 solve and how will whomever insisted on it being in the text use it?

Which remedies must be provided, and as an outcome of which type of process
- a court case or a dispute resolution policy? Cancellation and transfer
are the traditional remedies in domain name disputes. What if monetary
damages or domain name seizures are argued to be the most effective
remedies under the Provision? These remedies go beyond those provided in
the UDRP. Would a ccTLD have to offer these remedies as part of their
dispute resolution policy? What would that entail? An evidentiary procedure
for determining damages, for example?

If the Provision intends for countries to provide trademark owners with a
cause of action under the country's law, why must it be specific to a
ccTLD? Why not all top-level domains? Couldn't a simple trademark
infringement action in court achieve the same result and don't countries
party to the TPP offer those causes of action in their trademark laws
anyway?

If trademark owners already have avenues for redress, then S2 could result
in unnecessary costs for ccTLD managers. I share in the position of the
majority of TPP parties and believe that Section 2 should be removed.



*Version 2.*

*Thanks to Carolina Aguerre, Keith Davidson and Burcu Kilic for providing
feedback on the above - kind gestures that should not be taken as
endorsement of the views expressed herein. Any errors are mine and mine
alone.*

[1] http://en.wikipedia.org/wiki/CCTLDs

[2] http://www.icann.org/en/resources/compliance/cctld

[3] http://www.fas.org/sgp/crs/row/R42694.pdf

[4] RFC 1591 states: "Rights to Names. In case of a dispute between domain
name registrants as to the rights to a particular name, the registration
authority shall have no role or responsibility other than to provide the
contact  information to both parties. The registration of a domain name
does not have any Trademark  status.  It is up to the requestor to be sure
he is not violating anyone else's Trademark."



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