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IPO warns about premium loopholes in new gTLD trademark protection
It seems like it’s been an age since we last heard the intellectual property lobby pushing for stronger rights protection mechanisms in new gTLDs, but they’re back just in time for the first launches.
The Intellectual Property Owners Association has written to ICANN this week to warn about loopholes in the standard new gTLD Registry Agreement related to premium name reservations that the IPO said “will adversely affect trademark rights holders”.
The letter (pdf) makes reference to two specific parts of the contract.
Specification 5 enables registries to reserve up to 100 names “necessary for the operation or promotion of the TLD” in section 3.2 and an unlimited number of names in section 3.3.
Section 3.3 is vague enough that I’m aware of new gTLD applicants that still don’t know whether it allows them to reserve an unlimited number of “premium” names or not.
However, most new gTLD registries I’ve talked to appear to be convinced that it does. DotKiwi’s recently announced premium plan seems to be taking advantage of 3.3.
The IPO is worried that massive lists of premium names will wind up containing lots of strings matching trademarks, which will prevent mark holders from defensively registering during Sunrise.
Worse, the IPO said it could lead to registries milking trademark owners for huge fees to register their “premium” marks. It said:
such reservations would invite the abuse of protected marks. For instance, Registry Operators may reserve the marks of protected brands to leverage premium sales. Further, Registry Operators may use this ability to release names to market competitors of the brand owners.
The counter argument, of course, is that owners of spurious trademarks on generic terms could game Sunrise periods to get their hands of potentially valuable domain names (cf. the .eu sunrise)
The IPO wants ICANN to expand the Trademark Clearinghouse to send Trademark Claims notices to new gTLD registries when they reserve a name matching a listed trademark.
It also wants a new dispute procedure that mark owners could use to get names released from reserved status. It would be like UDRP, but modified to allow for registries to reserve dictionary words related to their gTLD strings, the IPO said.
If my sense of the mood of ICANN’s leadership during last month’s Buenos Aires meeting is anything to go by, I can’t see these last-minute requests for changes to RPMs getting much traction, but you never know.
Premium names that turn out to be trademark violations are subject not only to URS and UDRP, but also to TM-PDDRP if trademark owner can show registry operator to be conspiring to violate trademark. RPMs are a combination of before and after registration mechanisms, not only one or the other.
But isn’t the bigger issue that trademark owners are being unfairly subjected, i.e. FORCED, to having to do this maybe endlessly in the face of potentially hundreds of needless TLDs? What is happening is extortion, plain and simple.
What is happening is making brand owners aware that they are not exclusive owners of a string. The trademark system already allows the same string on different classes of goods and services and different jurisdictions. There is no reason the domain name system to be different, and the “hundreds of needless TLDs” will finally make them realize the truth about it: that they shouldn’t register in all TLDs, and there will be lawful uses of the same string in other TLDs.
Currently there is not only 20-something TLDs; people seem to forget ccTLDs, and the number of open TLDs will only double from now to after this new gTLD round, as a large number of TLDs will be closed brand registries.
It is overkill for the IPO to recommend that “[t]he Registry Operator seeking to reserve, self-allocate or release the name should be notified if such name has been registered as a trademark. If the Registry Operator nevertheless proceeds to reserve, self-allocate or release the names at issue, trademark owners should be notified when their registered mark has been so reserved, self-allocated or released to a third-party.”
That particular recommendation is not necessary, because a variation of this solution has already been implemented by ICANN’s Final RPM Requirements: If a Registry “releases for Allocation or registration such reserved domain name at any time following the start date of the Claims Period, such domain name MUST be subject to the Claims Services.” (http://newgtlds.icann.org/en/about/trademark-clearinghouse/rpm-requirements-30sep13-en.pdf, pg. 8). Claims Services requires notification to registrant and trademark holder of potentially infringing registration.
While I understand that the IPO has an interest in increasing intellectual property protections to the exclusion of all other interests, I don’t think that a belt and suspenders approach is warranted in this situation. When a registry withdraws a name from reservation, if that name is registered within 90 days of the withdrawal, the registrant will receive the same Claims Period warning that the IPO advocates. The only difference between the IPO recommendation and the Final RPM Requirements is that the IPO recommends a claims period notification at the time of reservation and the Final RPM Requirements mandate the notification at the time of registration. The purpose of the Claims Period notification is to diminish the effectiveness of the good faith registration defense in UDRP actions, and imposing an additional Claims Period notification will not further this goal.
Jonathan Frost | .Club
The other consideration is that a Registry engaged in trademark abuse is subject to the PDDRP which, in short order, can terminate the registry accreditation.
The notion that someone has gone through the time and expense of obtaining a registry accreditation for the purpose of engaging in abusive registration of trademarks as step one of their business plan, and in the face of effective remedies, verges on some peculiar form of paranoia.