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What’s wrong with Melbourne IT’s new anti-cybersquatting plan?

Kevin Murphy, August 16, 2012, 21:28:27 (UTC), Domain Policy

Genuine question.
Melbourne IT, the Aussie registrar with the increasingly vocal brand-protection focus, has come up with a new scheme for protecting super-famous brands after new gTLDs start to launch.
It draws on elements of the abandoned Globally Protected Marks List, ICM Registry’s Sunrise B policy, .CO Internet’s launch program, and various recent demands from the intellectual property community.
It’s called the paper Minimizing HARM (pdf), where HARM stands for High At-Risk Marks.
The title may set off grammatical alarm bells, but the rest reads like the least-unreasonable proposition for protecting big brands from cybersquatters that I’ve come across in a long time.
What I like about it is that it’s actually contemplating ways to prevent gaming from the outset, which is something the IP lobby hardly ever seems to do when it demands stronger rights protection mechanisms.
The idea calls for the forthcoming Trademark Clearinghouse to flag a narrow subset of the trademarks in its database as High At-Risk Marks that deserve special treatment.
Melbourne IT has organizations such as PayPal and the Red Cross in mind, but getting on the list would not be easy, even for famous brands.
First, companies would have to prove they’ve had trademark protection for the brand in three of ICANN’s five geographic regions for at least five years — already quite a high bar.
Implemented today, that provision could well rule out brands such as Twitter, which is an obvious high-risk cybersquatting target but might be too young to meet the criteria.
Dictionary words found in any of UN’s six official languages would also be banned, regardless of how famous the brand is. As the paper notes, that would be bad news for Apple and Gap.
Companies would also have to show that their marks are particularly at risk from phishing and cybersquatting.
Five successful UDRP complaints or suspensions of infringing domains by a “top ten registrar” would be enough to demonstrate this risk.
But that’s not all. The paper adds:

In addition to meeting the minimum criteria above, the High At-Risk Mark will need to obtain a minimum total points score of 100, where one point is awarded for each legal protection in a jurisdiction, and one point is awarded for each successful UDRP, court action, or domain registrar suspension undertaken in relation to the mark.

That appears to be setting the bar for inclusion high enough that an OlympicTM pole-vaulter would have difficulty.
Once a brand made it onto the HARM list, it would receive special protections not available to other brands.
It would qualify for a “Once-off Registration Fee”, pretty much the same as ICM’s .xxx Sunrise B, where you pay once to block your exact-match domain and don’t get pinged for renewal fees every year.
Any third parties attempting to register an available exact-match would also have to have two forms of contact information verified by the gTLD registry before their names resolved.
The Trademark Claims service – which alerts mark owners when somebody registers one of their brands – would run forever for HARM-listed trademarks, rather than just for the first 60 days after a gTLD goes into general availability.
The always controversial Uniform Rapid Suspension service would also get tweaked for HARM trademarks.
Unless the alleged cybersquatter paid the equivalent of a URS filing fee (to be refunded if they prevail) their domains would get suspended 48 hours after the complaint was filed.
I’m quite fond of some of the ideas in this paper.
If ICANN is to ever adopt a specially protected marks list, which it has so far resisted, the idea of using favorable UDRP decisions as a benchmark for inclusion – which I believe Marque also suggested to ICANN back in February – is attractive to me.
Sure, there are plenty of dumb UDRP decisions, but the vast majority are sensible. Requiring a sufficiently high number of UDRP wins – perhaps with an extra requirement for different panelists in each case – seems like a neat way of weeding out trademark gamers.
The major problem with Melbourne IT’s paper appears to be that the system it proposes is just so complicated, and would protect so few companies, that I’m not sure it would be very easy to find consensus around it in the ICANN community.
I can imagine some registries and registrars might not be too enthusiastic when they figure out that some of the proposals could add cost and friction to the sales process.
Some IP owners might also sniff at the some of the ideas, just as soon as they realize their own trademarks wouldn’t meet the high criteria for inclusion on the HARM list.
Is Melbourne IT’s proposal just too damn sensible to pass through ICANN? Or is it riddled with obvious holes that I’ve somehow manged to miss?
Discuss.

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Comments (7)

  1. KD says:
    August 16, 2012 at 10:58 pm

    At first glance it seems like a good plan.
    I do agree it might be a little complicated though. Lets make up an example and say there is a huge brand called “TWare”? So you can’t register TWare.extension. What happens to TWareOnline.extension? Or even better, what about Software.com? There are little nuiances, but for the most part it is a very interesting idea.

    Reply
  2. KD says:
    August 16, 2012 at 10:59 pm

    Freudian slip… I meant to say Software.extension, not .com…

    Reply
  3. Antony Van Couvering says:
    August 17, 2012 at 5:48 pm

    Kevin,
    This is labeled by Melbourne IT as a “Community Discussion Paper.” Do you know what community they are targeting, and how that discussion will work? Do you know who at MIT should be contacted?
    Antony

    Reply
  4. Andrew says:
    August 18, 2012 at 6:05 am

    I give them credit for trying to raise the bar in this controversial area.

    Reply
  5. Redford says:
    August 21, 2012 at 1:18 pm

    I find it interesting that the company who registered 140 new gTLDs on the back of a ‘protect your brand’ campaign and who reported making 90k per application (not to mention ongoing annual fees) can seriously expect to be considered an authority on this matter. There ‘paper’ was full of highfalutin unrealistic measures that will be as valuable as some of the new gTLDs they assisted their client’s apply for.
    No matter how you look at it, Melbourne IT win. They make money on a cybersquatter landrush through an increase in registrations, but also on any additional protective measures they sell to their clients.
    If they are serious they would pick a side.

    Reply
  6. Philip Corwin says:
    August 22, 2012 at 5:02 pm

    Their URS proposal would create a loser pays system for the registrant of even a single domain, and result in domain suspension if the reply fee wasn’t paid within 48 hours of notice. Smells like SOPA.
    These are major policy proposals, not implementation details, and should not even be considered absent full review by ICANN’s GNSO Council and Board.

    Reply

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