A year at ICANN:

the users
perspective
Fordham IP Conference, 2015

attorney advertisement
2015 Cooley (UK) LLP
Dashwood, 69 Old Broad Street, London EC2M 1QS, UK
The content of this packet is an introduction to Cooley (UK)
LLPs capabilities and is not intended, by itself, to provide legal
advice or create an attorney-client relationship. Prior results do
not guarantee future outcome.

To define users, use rs

Registrants

Registrars
Registries

Rest of us

Previous ICANN discussions at Fordham

2013
New gTLD single registrant

registries
New gTLD objection
mechanisms
New gTLD GAC Advice

2014
Transition of IANA stewardship
New gTLD objection
mechanisms
2013 RAA data retention
specification

This year, users need to know about

That .sucks
RPM review URS vs. UDRP vs. alternatives
GAC Safeguards - Categories I and II still being discussed
apps vs. name collision vs. iot - Do gTLDs matter in an IOT world?
PICDRP - The importance of being earnest
Geonames and policy development bottom-up multi-stakeholder, from the top
down?
Data Retention Waivers - Hitting their stride, but will 2016 change everything?

This year, users need to know about

That .sucks
RPM review URS vs. UDRP vs. alternatives
GAC Safeguards - Categories I and II still being discussed
apps vs. name collision vs. iot - Do gTLDs matter in an IOT world?
PICDRP - The importance of being earnest
Geonames and policy development bottom-up multi-stakeholder, from the top
down?
Data Retention Waivers - Hitting their stride, but will 2016 change everything?

That <.sucks>

Sunrise registrations and Sunrise premium registrations, i.e.

strings registered or blocked in other TLDs sunrise periods: $2,499

Standard registrations: $249

Consumer Advocate Subsidy applies to Standard and Sunrise
Premium domains, in which case it is $9.95:
The Registrant may not be a corporation or in any way affiliated with the
corporation the domain is referencing
Domain name directs to a free, hosted, consumer forum courtesy of
everything.sucks. For example, www.ProductA.sucks will resolve to a
website with a discussion-forum on ProductA.

Mechanisms for protecting rights review

URS vs. UDRP vs. alternatives
URS

UDRP

Length of Complaint

500

5,000

Length of Reply

2,500

5,000

Speed

5 days

14 days

Standard of proof

Clear and convincing

Balance of probabilities

Remedy

Suspension

Cancellation / transfer

IP Enforcement Directive
Vertical Leisure Ltd v Poleplus Ltd (2014) (IPEC) (cf BT v. One In A
Million (1999), which is undoubtedly good law)
Universal Music v. Key-Systems GmbH (2014) (Regional Court of
Saarbrcken; Higher Regional Court of Saarbrcken)
AFNIC / EuroDNS v. Francelot (2011) (Court of Appeal of Versailles);
AFNIC / EuroDNS v. Air France (2012) (Court of Appeal of Paris)

Number of URS complaints filed

# of URS filed
40
40
35
30
24

23

25

24

21

20

19

20

# of URS filed

19
17
14

13

15
9

10

17

10

5
1

0
0
0 41609
0
0 41671
41548
41730
41791
41852
41913
41974
42036
42095
41518
41579
41640
41699
41760
41821
41883
41944
42005
42064

GAC sub working group geonames proposal

Part of broader push for

government-led regulation of
terms with national, cultural,
geographic and religious
significance

Goes back to GAC Principles

of 2007, not all of which made
it into the Applicant
Guidebook, due to negotiation
and compromise on all sides

GAC sub working group geonames proposal

Geonames proposal seeks

veto rights which would never
be available offline, penalising
the digital economy

No nuance or appreciation of
context in the proposal

No evidence that existing

RPMs are insufficient to
protect government interests

Practically speaking, current

proposal simply too broad

Data Retention Waivers

2013 RAA: Registrar shall collect

[and] maintain [PII] for the duration
of Registrar's sponsorship of the
Registration and for a period of
two additional years thereafter
unless reasonably likely to violate
applicable law
ICANN Process for Handling
Registrar Data Retention Waiver
Requests: Registrars will be
required to periodically reaffirm
that the pertinent law has not
materially changed and that the
conflict still exists.

"Location European nation states" by Ssolbergj - File:Germany on the globe (Germany centered).svg. Licensed under CC BY-SA 3.0 via
Wikimedia Commons http://commons.wikimedia.org/wiki/File:Location_European_nation_states.svg#/media/File:Location_European_nation_states.svg

Data Retention Waivers

cf Article 3 (draft) General Data

Protection Regulation, which
would extend application of
Regulation to the processing of
personal data:
in the context of the activities of
an establishment of a controller or
a processor in the Union, whether
the processing takes place in
the Union or not; and
of data subjects in the Union by a
controller or processor not
established in the Union

"Location European nation states" by Ssolbergj - File:Germany on the globe (Germany centered).svg. Licensed under CC BY-SA 3.0 via
Wikimedia Commons http://commons.wikimedia.org/wiki/File:Location_European_nation_states.svg#/media/File:Location_European_nation_states.svg

Gareth Dickson

Gareth is a litigator in Cooley's London office. He is a UK qualified solicitor and New York admitted
attorney whose practice focuses on the resolution of technology, intellectual property and social media
disputes at the High Court, Court of Appeal, UK Intellectual Property Office, OHIM, WIPO, Nominet and
IPEC. Gareth was recently appointed by WIPO to the position of UDRP Panelist. He is also a member
of the Law Societys IP Law Committee and acts as IP Liaison to the Civil Justice Committee.
Gareth has successfully defended multiple Legal Rights Objections and Community Objections as part
of ICANNs new gTLD program, including three Objections filed by the Independent Objector. He
advises clients on top-level domain delegation as well as on issues of intermediary liability, jurisdiction
and the digital resale and protection of software.
SELECT SPEAKING ENGAGEMENTS AND PUBLICATIONS
Speaker, "Digital Resale - What Does the Future Now Hold?," IBC's 14th International Copyright Law
Conference, London (Dec. 2014)
Author, "UK: Now is the time for review - The online domain expansion raises a number of issues for UK
rights holders," World Trademark Review (Sept. 2014)
Speaker, "Practical steps for policing the Internet and latest news on gTLDs," Sweet & Maxwell Annual
Trade Mark Conference, London (June 2014)
Author, "Trade Marks and the Internet," Westlaw UK Insight (April 2014)
Author, "Game over for Excessive TPM?: The Nintendo Ruling," The IT Law Community, (Feb. 2014)
Author, "Social media and intellectual property in Europe," E-Commerce Law & Policy (Feb. 2013)

Associate, London
Cooley (UK) LLP
Dashwood
69 Old Broad Street
London EC2M 1QS
Phone: +44 (0) 20 7556 4470
Mobile: +44 (0) 79 2048 9719
Email: gdickson@cooley.com