The 59th international meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) commences on June 25, 2017, in Johannesburg, South Africa. ICANN traditionally holds three international meetings per year, which rotate among five geographic regions and three meeting formats with different subject areas of focus. The Johannesburg meeting is only the second ever in the “Policy Forum” format, a shorter meeting focused on policy development among community members. This Legal Update details several high-profile topics that have emerged amid community discussions in the lead-up to the meeting in Johannesburg. Rights Protection Mechanisms Review The ICANN community continues to review the rights protection mechanisms (RPMs) developed as part of the New gTLD Program, with an eye toward possible tweaks to them. Such tweaks would likely apply to future new gTLDs and may also apply retroactively to existing gTLDs from the 2012 round, as well as the various legacy and sponsored gTLDs that predate the 2012 new gTLD program. The RPMs currently under discussion include the Trademark Clearinghouse (TMCH), Sunrise Services, and Trademark Claims Services, as well as voluntary marketplace RPMs such as the Domains Protected Marks List (DPML). Additional RPMs for discussion include the Uniform Rapid Suspension System (URS) and the Uniform Domain Name Dispute Resolution Policy (UDRP). To date, the RPM Review working group has reached a number of key preliminary conclusions regarding the TMCH, including that: • No changes should be made at this time to the “TM+50” service, which permits brand owners to include up to 50 previously abused domain name labels in the TMCH in connection with an existing TMCH-recorded mark. Such labels must previously have been held to be registered and used in bad faith through a UDRP or court proceeding; and • There is no clear need for additional or different recourse mechanisms to challenge a rejected submission to record a trademark in the TMCH (the TMCH already provides a challenge mechanism). In addition, a number of proposals have been delivered concerning additional topics, most recently including a proposal for expanding TMCH matching rules for purposes of the Trademark Claims Service beyond “exact matches,” to include “marks contained” matches. Brand owners should weigh in to support these kinds of proposals, while also defending against proposals aimed at narrowing or restricting these RPMs—such as the potential exclusion of all composite or special form trademarks from the TMCH, slashing entry into 2 Mayer Brown | Key Topics to Follow During the ICANN 59 Policy Forum in Johannesburg the TMCH solely to fanciful or coined trademarks, or eliminating the TMCH entirely. The working group continues to refine its charter questions concerning Sunrise and Trademark Claims, and ICANN 59 in-person meetings will likely present the initial opportunity to begin discussing these issues in substance. Continued strong participation from the brand owner community remains vital to ensure the RPMs remain useful tools as additional new gTLDs are launched. Key ICANN 59 sessions: • GNSO Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group Face-to-Face Meeting ICANN Accountability Enhancements The ICANN community continues to discuss additional enhancements to ICANN organizational accountability, following the completion of the transition in October 2016 of the Internet Assigned Numbers Authority (IANA) from US government oversight to the ICANN community itself. These additional, post-IANA stewardship transition accountability enhancements, focus on the following key issues: • Improvements to ICANN’s standards for diversity; • Staff accountability; • Supporting Organization and Advisory Committee accountability and transparency; • Improvements to ICANN transparency, including enhancing the existing ICANN document disclosure policy; • Development of a “human rights framework” regarding ICANN’s responsibility to respect internationally recognized principles of human rights; and • Addressing certain jurisdiction-related questions, including how choice of jurisdiction and applicable laws for dispute settlement impact ICANN’s accountability. Each issue is being reviewed by a dedicated subteam as part of the accountability Work Stream 2 efforts. Many of the sub-teams have developed draft final reports for community review, although a number of the more contentious topics, including on jurisdictional issues, remain bogged down in internal disagreement and debate. In particular, a vocal minority, within the sub-team dedicated to jurisdictional issues, continues to apply pressure in an attempt to move the corporate formation of ICANN outside of California or the United States entirely. Disagreement abounds as to whether that topic even fits within the scope of the sub-team, since it was essentially already decided in Work Stream 1, and what level of consensus is necessary to move past the vocal minority position. For all parties in privity of contract with ICANN— including .Brand TLD registries, as well as any actor with intellectual property enforcement interests in mind—it remains critical to keep tabs on these discussions to ensure such vocal minority views aiming to distance ICANN from US jurisdiction and applicable law do not take root in preliminary recommendations and conclusions of the group. Such changes would drive all contractual compliance matters and forms of dispute resolution with ICANN into relative legal uncertainty and also raise the specter of sovereign immunity for ICANN, perhaps as a treaty-based organization headquartered in Switzerland. In addition, following the IANA stewardship transition, the community continues to implement revised ICANN bylaws, necessitating some further tweaks and discussion to ensure the bylaws can be practically applied. Key ICANN 59 sessions: • Work Stream 2 CCWG-ACCT Face to Face Plenary Meeting 3 Mayer Brown | Key Topics to Follow During the ICANN 59 Policy Forum in Johannesburg • GAC Meeting to Discuss CCWG-ACCT Work Stream 2 Matters • Empowered Community’s Cross Community Forum on Proposed Fundamental Bylaws Amendments • Implementation of new Bylaws Geographic Names The ICANN community continues to engage in contentious debate regarding the appropriate nature and scope of protection to be afforded to terms with geographical significance, both at the top and second levels of the Domain Name System (DNS). Focus will return to these issues during ICANN 59, as the New gTLD Subsequent Procedures Policy Development Process Working Group (Sub Pro PDP) will hold community-wide discussion forums during this meeting specifically to address the use of geographic names as new gTLDs. In view of the relatively unprecedented opportunity to assert authority over geographic terms, many governmental representatives continue to push forward a proposal whereby all future new gTLD applicants would need to conduct due diligence to determine whether their proposed gTLD string constitutes a term of “geographic or cultural significance.” If so, they would be required to seek the consent or non-objection of all relevant governmental authorities in order to proceed with their gTLD application. Governmental Advisory Committee (GAC) members who support this proposal claim that it is necessary to advance the global “public interest” because it would prevent TLDs representing geographic or cultural terms from falling into the hands of private third parties to the possible detriment of relevant geographic or cultural communities around the world. Of course, this argument ignores the fact that governments do not have any internationally recognized legal rights or priority with respect to the use of such names, and, in fact, other internationally recognized legal principles, such as trademark law, specifically confer such priority to private parties instead. While a number of governmental representatives continue to push this proposal forward, much of the broader ICANN community remains staunchly opposed to this kind of government control and the potential to exploit new gTLD applicants. It will be important to ensure that the Sub Pro PDP recommendations regarding terms of geographical significance serving as new gTLDs do not permit these governmental interests to prevail, where there is clearly little support from the rest of the community and very clear conflict with international trademark legal norms. Key ICANN 59 sessions: • GAC Session on 2-Character Country Codes as Second Level Domains • GAC Working Group on the Protection of Geographic Names in Future Rounds of New gTLDs • Cross Community Discussion – Geographic Names at the Top-Level Session I • Cross Community Discussion – Geographic Names at the Top-Level Session II New gTLD Subsequent Procedures In addition to geographic names issues, the Sub Pro PDP continues to work on a number of other critical policy issues, including: • Possible changes to the template new gTLD Registry Agreement to create separate terms and conditions for .Brand TLDs and other TLD types; • Possible changes to the application process to expedite low-risk TLD types such as .Brand TLDs and reduce application and TLD maintenance costs accordingly; • Possible changes to string confusion review and objection processes to ensure confusingly similar strings, such as singular/plural variations, are no longer permitted to co-exist in the DNS; and 4 Mayer Brown | Key Topics to Follow During the ICANN 59 Policy Forum in Johannesburg • Possible changes to other legal objection proceedings, such as the Legal Rights Objection, to ensure that new gTLD applicants do not game the system simply to trigger private auctions with parties that have existing legal rights in a name and to ensure that such parties can adequately object to a third party obtaining a new gTLD matching that name. Given the importance of these issues to brand owners and prospective .Brand TLD applicants, it remains critical to continue to engage in this PDP to ensure positive policy outcomes in future new gTLD application, evaluation and launch processes. Key ICANN 59 sessions: • GNSO New gTLD Subsequent Procedures PDP Working Group Face-to-Face Meeting • GAC Session on New gTLD Policies Next-Generation Registration Directory Service The ICANN community continues its glacial pace in considering whether and how to design and implement a next-generation Registration Directory Service (RDS) to replace the current “Whois” registration data directory system. Current efforts have been bogged down in endless back-and-forth debate as to what elements defined as “thin” data should be publicly available and whether any such elements should not be generally publicly available due to privacy concerns. Current thin data elements found in Whois include key information such as the domain name, registrar name, registration creation date and expiration date. It remains important for intellectual property owners, who rely on publicly available Whois data to investigate possible IP infringement and other related abuses in the DNS, to continue tracking these discussions to ensure as much registration data as possible remains available for these purposes. Put into a practical context, without publicly available domain name registration dates, brand owners would not be able to ascertain priority for enforcement actions. Without publicly available registrar information, brand owners would not be able to fully identify applicable laws and courts of competent jurisdiction to settle disputes with registrants. And, most obviously, without publicly available registrant contact information, cease and desist letters, amicable resolution efforts, and even the Uniform Domain Name Dispute Resolution Policy, may all be made moot. Brand owners would necessarily need to file costly complaints in courts of competent jurisdiction, simply to discover the identity of, and communicate with, domain name registrants who register domains for tens of dollars. Simultaneously, many individuals within the group, who favor complete anonymity for domain name registrants, continue to herald the European Union General Data Protection Regulation (GDPR) as the end of publicly accessible domain name registration data. Meanwhile, a more reasonable minority within the group has properly identified the GDPR as a compliance concern for domain name registration authorities, who likely need to adjust current practices for how they obtain consent from natural persons to publish and process their data. Again, discussions on this topic remain extremely slow-going, and much discussion and development of final recommendations lies ahead, so there remains substantial time for IP owners to continue to engage and affect policy outcomes on this key issue. Key ICANN 59 sessions: • Cross-Community Discussion on NextGeneration gTLD Registration Directory Services (RDS) Policy Requirement • GDPR: the most important change in data privacy regulation in over 20 years 5 Mayer Brown | Key Topics to Follow During the ICANN 59 Policy Forum in Johannesburg • GNSO - new gTLD Registration Directory Services (RDS) to replace WHOIS Policy Development Process Working Group F2F Meeting New gTLD Auction Proceeds ICANN conducted numerous auctions of last resort to determine which applicant for a contested new gTLD from the 2012 application round would be awarded the string. These auctions collectively raised a substantial sum, approximately US$233 million in net total proceeds, all of which is being held in trust by ICANN. The community has been tasked with developing a framework for determining uses for these auction proceeds under the auspices of the Cross-Community Working Group on New gTLD Auction Proceeds (CCWG-Proceeds). Although the work of this group is just getting underway, given the size of the pool of resources at stake and the future opportunities to use these funds in connection with important ICANNrelated work, it would be useful to track these efforts and engage on occasion to help steer the outcomes in a direction that will benefit all stakeholders, including brand owners and .Brand TLD operators. The working group will be holding one of its first face-to-face meetings during ICANN 59, presenting a good opportunity to check in on the group’s progress to date and assess possible advocacy issues, desired outcomes and next steps. Key ICANN 59 sessions: • GNSO - new gTLD Auction Proceeds CrossCommunity Working Group F2F Meeting We hope that this high-level advisory provides you with unique insight into several major areas of impact and interest for brand owners and registry operators, including for .Brand TLDs, which are expected to receive attention in Johannesburg. A link to the full meeting schedule is available here. For more information about the topics raised in this Legal Update, please contact any of the following lawyers. Brian J. Winterfeldt +1 202 263 3284 firstname.lastname@example.org Sarah B. Deutsch +1 202 263 3765 email@example.com Griffin M. Barnett +1 202 263 3289 firstname.lastname@example.org Phillip V. Marano +1 202 263 3286 email@example.com Mayer Brown is a global legal services organization advising clients across the Americas, Asia, Europe and the Middle East. 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