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Tonkin says better new gTLD trademark protections could come in the first round

Kevin Murphy, September 24, 2012, 11:27:17 (UTC), Domain Policy

Groups pushing for stronger new gTLD trademark protection mechanisms could get some of their wishes if they present a unified, coherent position to ICANN.

That’s according to Melbourne IT chief strategy officer and ICANN vice chairman Bruce Tonkin, speaking to DI today about the company’s trademarks summit in Washington DC last week.

Tonkin said that the event identified five rough areas of consensus about changes to rights protection mechanisms, at least two of which could be made before new gTLDs start to go live (which he expects to happen in the fourth quarter of 2013).

The Business Constituency, IP Constituency and so-called “brand summit” are now talking about their areas of common ground and are expected to continue the conversation at the ICANN meeting in Toronto next month.

One area of apparent agreement is an extension to the Trademark Claims service – which alerts trademark owners when somebody registers a domain matching their mark – beyond the 60 days mandated by the Applicant Guidebook.

Trademark interests want the service made permanent, because cybersquatters don’t suddenly stop registering infringing domain names 60 days after a TLD hits general availability.

ICANN has resisted this change, as CEO Fadi Chehade explained last week, largely because several companies already offer commercial trademark watch services.

Many registries and registrars are also against such a move due to the potential cost considerations.

However, Tonkin does not appear to be convinced by either argument.

“Even though a single gTLD might be for 60 days, gTLDs will launch at a range of different times over a number of years. Registries and registrars will have to support that process over a couple of years,” he said. “The cost to industry to extend it over 60 days isn’t that high.”

While supporting the extension may seem like an own goal for Melbourne IT – one of the companies already selling brand monitoring services – Tonkin is not too concerned about losing business.

The value of such services is in the added intelligence, such as monitoring the usage of infringing domains and recommending recovery strategies, he said, not just supplying lists of domains.

“Just that raw data isn’t especially beneficial,” he said.

There’s also no service on the market today that, like Trademark Claims, alerts registrants about third-party trademark rights at the point of registration, Tonkin noted.

Extending Trademark Claims could be seen as a matter of implementation, rather than policy, and may be one of the easiest goals for the trademark community to achieve.

“With enough community support, GNSO advice or ALAC advice could be presented to the board, which could make changes to the Applicant Guidebook,” Tonkin said.

“But I think the board would be reluctant to do that unless it saw very clear support from the community,” he added.

A faster, cheaper Uniform Rapid Suspension system is something that could also be made to happen via “implementation” tweaks, he indicated.

Trademark owners are looking for URS to be priced in the $300-$500 range, which WIPO and the National Arbitration Forum don’t think is feasible the way it is currently structured.

ICANN plans to issue a Request For Proposals soon, according to chief of strategy Kurt Pritz, in order to see if any other provider can do it more cheaply, however.

Another request from trademark holders, to do registrant identity checking — such as email authentication — could be handled via the ongoing Registrar Accreditation Agreement talks, Tonkin suggest.

But other emerging consensus areas would be more suited to a full GNSO Policy Development Process, he said.

The IP community wants the Trademark Clearinghouse to include not only exact matches of their trademarks, but also mark+keyword records (such as googlesearch.tld or paypalpayments.tld).

While there’s agreement in principle among these constituencies, there are still some differences in the details, however.

Some say that the keywords should be limited to words included in the trademark registration, while others believe that mark+keywords won in UDRP cases should be included.

If the former approach is used, domains such as paypal-support.tld, to borrow the example repeatedly used at last week’s summit, would probably not be protected.

Tonkin said that last week’s summit seemed to produce agreement that an algorithmic approach would be too complex, and would generate far to many false positives, to be effective.

A PDP would also be likely be required to find agreement on a mandatory “blocking” system, along the lines of what ICM Registry created for its Sunrise B, Tonkin said.

The problem with PDPs is that they take a long time, and it’s very unlikely that they could produce results in time for the first new gTLD launches.

Tonkin, however, suggested that moving forward with a PDP would create a strong incentive for new gTLD registries to create and adhere to voluntary best practices.

He pointed out that many applicants plan to bring in stronger rights protection mechanisms than ICANN requires already.

While Tonkin is vice chairman of ICANN’s board, he’s not involved in any new gTLD decisions or discussions due to his conflict of interest as a senior executive at a major registrar.

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Comments (2)

  1. Hi Kevin:

    Further to … “Trademark owners are looking for URS to be priced in the $300-$500 range, which WIPO and the National Arbitration Forum don’t think is feasible the way it is currently structured.”

    While I’m not personally familiar with the National Arbitration Forum, I’m some what more familiar with WIPO and would ask …

    Is it surprising that WIPO would object to such a ‘token’ fee?

    Consider that for $350.00 an individual may secure a proper hearing, in a “Real Court” (US Federal Court) as a precursor to a Court Case, whereas WIPO charge $1,500 for a single panellist and the parties are not present to collectively communicate.

    As an aside:

    These new gTLD are going to be governed under United States Law, just as certainly as the sun will rise on December 22nd, the 1st day of the new “Mesoamerican Long Count calendar” so, where would you go as a business owner?

    Also … ICANN’s charging a “MASSIVE FOR PROFIT PRICE” for their part in the system, which, by the way is vastly more costly than a USPTO Fee, of about $1,000 or so.

    > http://www.uspto.gov/web/offices/ac/qs/ope/fee092611.htm#tm <

    So ICANN … Your pricing, for TMCH needs to reflect that of the VERY COMPETENT people at the USPTO, whom also are "an agency of the Department of Commerce".

    If they can manage it, so too can you.

    "Jones-ing" for a "Day" in Alexandria 🙂

    Cheers, Graham.

  2. John Berryhill says:

    “Consider that for $350.00 an individual may secure a proper hearing, in a “Real Court” (US Federal Court) as a precursor to a Court Case, whereas WIPO charge $1,500 for a single panellist and the parties are not present to collectively communicate.”

    “Real courts” are subsidized by the government. The $350 filing fee of US federal court complaint does not cover the cost of the ensuing proceedings. Likewise the USPTO has a significant income stream from maintenance fees and renewals which, if the USPTO was actually permitted to be self-funded, would cover operations. The problem with the USPTO is that all of its revenue is allocated to the US Treasury, and the office itself has to operate on a budgeted allocation which is less than the revenue it earns.

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