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Trademark lobby makes final new gTLD demands

Kevin Murphy, May 16, 2011, 08:51:09 (UTC), Domain Registries

With ICANN’s latest and potentially last call for comment on its new top-level domains program just hours away from closing, the arguments are shaping up along familiar lines.

Trademark protection is unsurprisingly still center stage, with loud calls for the Applicant Guidebook’s rights protection mechanisms to be amended more favorably to brand owners

Meanwhile, many of those strongly in favor of the new gTLD program launching soon have submitted more subdued, concise comments, merely urging ICANN to get a move on.

While there are still some fringe opinions, many within the intellectual property community are on the same page when it comes to rights protection mechanisms.

URS

The Uniform Rapid Suspension policy, which enables trademark holders to relatively quickly shut down obvious cases of cybersquatting, comes in for particular attention.

In the latest draft of the URS, as well as its sister policy, the Trademark Clearinghouse, brand owners have to present “proof of use” for the trademarks which they want to enforce.

The International Trademark Association, the Intellectual Property Constituency and others want this provision eliminated, saying it is inconsistent with many national trademark laws.

The also want the burden of proof lowered from the “clear and convincing evidence” standard, and want to expand the “loser pays” model, to provide an economic disincentive to cybersquatting.

In the latest version of the Applicant Guidebook, ICANN introduced a system whereby a cybersquatter has to pay the cost of a URS they lose, but only if the case comprises over 25 domains.

INTA, the IPC and others want this reduced to something like five domains, on the grounds that 25 is too high a bar and may actually encourage larger-scale squatting.

IP Claims

They also want the Clearinghouse’s IP Claims service, which serves a warning to registrants when they try to register potentially infringing domains, expanded beyond exact-match strings.

Currently, you’ll receive a warning about possible infringement if you try to register lego.tld or foxnews.tld, but not if you try to register legostarwars.tld or foxnewssucks.tld.

Many commenters want this changed to also include brand+keyword domains (fairly easy to implement in software, I imagine), or even typos (not nearly so easy).

This makes sense if you assume that cybersquatting patterns in new TLDs mirror those in .com, where brand+keyword squatting comprise the majority of UDRP cases.

But if you look at the about 100 UDRP cases to be filed so far in .co, it seems that brand-only cybersquatting is clearly the order of the day.

Depending on how this was implemented, it could also create a “chilling effect” whereby IP Claims notices are sent to legitimate registrants.

It seems likely that with a brand+keyword approach, if someone tried to register legourmetchef.tld, they could wind up with a notice that the domain infringes the Lego trademark.

The trademark lobby also wants this IP Claims service extended beyond the first 60 days of a new TLD’s life, on the grounds that the cybersquatting risk does not disappear after a TLD launches.

According to submissions from existing TLD registries and potential applicants, this could add to the costs of running a TLD, increasing prices for registrants.

GAC

Most of these demands are not new. But in many cases, the IP lobby now has the support of the ICANN Governmental Advisory Committee.

The GAC and ICANN are due to meet by teleconference this Friday, ostensibly for their “final” consultation before ICANN approves the Guidebook a little over a month from now.

But with the US and Europe now strategically aligned, it seems likely that ICANN will find itself under more pressure than ever before to concede to the demands of trademark holders.

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