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New ICANN chief pours cold water on new gTLD trademark protection demands

Kevin Murphy, September 20, 2012, 21:55:13 (UTC), Domain Policy

Some of the enhanced trademark protection mechanisms being discussed currently by the IP lobby seem unlikely to be adopted by ICANN any time soon, if a response to Congress from new CEO Fadi Chehadé is any guide.
In a letter published tonight, Chehadé appears to rule out both the inclusion of ‘brand+keyword’ records in the Trademark Clearinghouse and an extension of the Trademark Claims service beyond 60 days.
These are two of the common demands to emerge recently from ICANN’s Business Consituency, Intellectual Property Constituency, and the so-called “brand summit” proposal.
The Chehadé letter was sent yesterday to the chairs and ranking members of the Judiciary Committees of both the House and Senate, in response to their August 7 letter.
On extending the Trademark Claims service — which alerts trademark owners when somebody registers a domain exactly matching their mark — beyond the current 60 days, he wrote:

For the first round of new gTLDs, ICANN is not in a position to unilaterally require today an extension of the 60-day minimum length of the trademark claims service. The 60-day period was reached through a multi-year, extensive process with the ICANN community. One reason for this is that there are existing IP Watch services that address this needs. Those community members that designed the Trademark Claims process were cognizant of existing protections and sought to fill gaps, not replace existing services and business models.

While this obviously does not rule out an extension of Trademark Claims, it’s pretty clear from the letter that ICANN has no plans to do so without some form of community consent.
On the matter of brand+keyword protections, seen by the trademark community as a crucial component of a strong anti-cybersquatting regime, Chehadé wrote:

It is important to note that the Trademark Clearinghouse is intended be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name (such as the mark + generic term suggested in your letter) would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determinations as to the scope of particular rights.

He goes on to say that providing enhanced rights protection mechanisms is optional for new gTLD registries and may be one way that they can competitively differentiate themselves.
Indeed, large applicants such as Donuts, Uniregistry and Google say they will offer RPMs that go above and beyond what is required by ICANN.
Extended trademark claims and the brand+keyword protections are two of the changes to the current proposed mesh of mechanisms that the trademark community has found common ground on recently.
At the Melbourne IT trademark summit in Washington DC earlier this week, these two areas were among those that appeared to have the most consensus.
However, applicants for mass-market gTLDs are fervently opposed to changes being made to the Applicant Guidebook at this late stage.
Jon Nevett, co-founder of Donuts, said at the Melbourne IT event that “the Applicant Guidebook at this point should be deemed closed”.
He pointed out that, having paid ICANN about $350 million in application fees, applicants should be considered contracted parties and have their expectations respected.

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Comments (8)

  1. Don says:

    ICANNT was originally founded to facilitate the global organization and distribution of domain names. They were given tremendous power. With power comes ego and agenda. ICANNT is out for ICANNT only, not for the global internet community. Its time to put an end to this nonsense!!!

  2. Kristina says:

    How embarrassing for the new CEO that his letter is rife with factual inaccuracies and misleading statements! It would be unfortunate if those were made known to the respective Judiciary Committee members. I can’t imagine how that could happen . . .

    • Rubens Kuhl says:

      When one gets a new job, it’s impossible to know beforehand who will embarrass you or not. You can write to committee if you feel like it, but writing to Chehadé is what can make the most progress of it.

    • Tobias says:

      Perhaps you could point out the specific factual inaccuracies and misleading statements? This would be useful for the continuation of this discussion.

  3. John Berryhill says:

    What is the process which removes expired, abandoned, and cancelled trademarks from the Trademark Clearinghouse?
    But, yes, Paypal should receive, for every domain name they register:
    1. a warning of US TM rights in “Y” owned by Yahoo
    2. a warning of US TM rights in “YP” owned by
    3. about 50 warnings of rights in “PAL” owned by a roster of registered marks for “PAL”
    4. a warning about US TM rights “AYP” from, believe it or not, Alternative Yellow Pages
    5. a warning about US TM rights in “YPA” from Yellow Pages Integrated Media Association
    6. another 50 warnings of US TM rights in “PA” from the registered owners of those TM’s
    7. another 30 from US registered marks for “AL”
    The string “PAYPAL” generates, at a minimum some 134 substring matches for US registered trademarks.
    Tell me more about factual inaccuracies and misleading statements.

  4. Marianna says:

    How embarrassing for the insatiable trademark owners and their laywers that think the world belongs to them. It is distressing that the new CEO needs to write a letter to them.

    • John Berryhill says:

      It is especially embarrassing, and more to the point unethical IMHO, for licensed attorneys to fail to identify themselves by, for example, use of their full names, when making disparaging public comments about others on blogs.

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