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Can ICANN make a trademark deal with the GAC?

Kevin Murphy, May 24, 2011, 20:51:39 (UTC), Domain Policy

The ICANN board and its Governmental Advisory Committee have yet to reach agreement on how to protect trademarks in new top-level domains, following their Friday teleconference.

The two parties are still stuck on at least four trademark protect issues, according to sources familiar with the talks, and the GAC is due to provide updated written advice to ICANN tomorrow.

Two of the areas still outstanding were previously marked “1A” in ICANN documents, meaning ICANN’s board believed the GAC’s concerns had already been resolved.

Trademark Claims

Details of the proposed Trademark Clearinghouse database and the related Trademark Claims service are still the subject of debate.

Trademark Claims provides an alert to a trademark holder if somebody tries to register their trademark in a new gTLD. The would-be registrant also gets a warning that they may be infringing rights.

As the Applicant Guidebook stands today, new gTLD managers will have to operate the service for the first 60 days of general availability, but the IP lobby and the GAC believe it should be permanent.

The sticking point for ICANN, as I understand it, is that there’s already a commercial market for brand protection services that have some overlap with Trademark Claims.

Several companies, such as MarkMonitor, CSC and Melbourne IT, offer services that alert customers when somebody appears to infringe their brand in a domain name.

If Trademark Claims ever made it into com and other gTLDs, it could effectively monopolize the brand watch services market. The Clearinghouse(s) will be ICANN contractors, after all.

Remember what happened when VeriSign announced its Wait List Service, which promised to effectively take over the existing domain back-order services market? It wasn’t pleasant.

Proof of Use

ICANN has already dropped its requirement for “substantive review”, but it still requires trademark holders to provide “proof of use” before they can add their marks to the Clearinghouse.

Without proof of use, companies will not be able to file Uniform Rapid Suspension complaints or defensively register their brands during new gTLD Sunrise periods.

The IP lobby and the GAC want this requirement scrapped. Any trademark of national effect should be enforceable using these rights protections mechanisms, they say.

One of the justifications is that some trademarks are obtained before the owner actually launches the product or service they pertain to.

If ICANN were to make these changes, there’s a good chance that bulk-registering bogus trademarks in loose jurisdictions may become an effective strategy for gaming the second level in new TLDs.

This has happened before, such as in .eu, and that wasn’t pleasant either.

Brand+Keyword

The current draft of the Applicant Guidebook only allows exact trademark matches into the Trademark Claims and Sunrise mechanisms.

But the the IP crowd (and, again, the GAC) thinks non-exact matches should be allowed in. In the .com space, the majority of cybersquatting nowadays is of course either a brand+keyword or a typo.

Millions are being needlessly spent on UDRP complaints over typos and brand+keyword domains, and the trademark lobby don’t want to risk having to spend even more.

But there could be implementation problems. Both types of variant could throw up lots of false positives during the Claims service, for example, creating conflicts where there aren’t any.

An automated system designed to scare off typosquatters could catch the generic domain goggles.tld as an infringement of Google’s trademark, to use an obvious example.

If brand+keyword Sunrise claims were allowed, holders of trademarks in generic terms could find themselves with a lucrative payday.

Any company that has a trademark on words such as “free”, “live”, “sexy” or anything that could act as a cool prefix, could have a field day during a Sunrise period.

Uniform Rapid Suspension

I understand a sticking point here continues to be the burden of proof required to make a URS case stick.

It’s currently “clear and convincing evidence”, but the IP lobby and the GAC want it reduced to “preponderance of evidence”, a lower burden.

To non-lawyers, the difference may seem trivial. Both standards are used in civil cases in many countries, but one’s a bit strong than the other.

“Preponderance of evidence” basically means “more likely true than not”, whereas “clear and convincing”… well, it’s a bit stronger than that.

The choice of burdens will have repercussions for years to come. Registrants in new gTLDs will know what they’re getting into, but if URS ever makes it into .com…

The Road to Singapore

It’s less than a month before ICANN’s next major meeting, and only a week until it plans to publish the next version of the Applicant Guidebook.

The ICANN board is due to meet face-to-face (and presumably in public) with the GAC on the first day of the meeting, June 19, but it seems that talks will be ongoing behind the scenes until then.

A great deal of progress has been made, but with complex issues still apparently unsettled (and there are more unresolved issues unrelated to trademarks) it’s little wonder that some are now wondering whether ICANN is as confident as it once was that June 20 is Guidebook Approval Day.

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Comments (9)

  1. JS says:

    Dot RF sunrise was gamed too with bogus trademarks, as a result, i don’t think icann will drop proof of use + the way i understand it, all jurisdictions are equally treated in terms of TMs, which in theory could make it even easier to game the system.

    TM + keyword i’m not sure if it’s even needed considering , as reported by some, that tm infringement during .co launch was mainly exact match.

    • Mike Grant says:

      “….all jurisdictions are equally treated in terms of TMs…”

      Erm JS, nope sorry they are not.There are many different rules in various Countries. For example ,to get a TM in USA I believe you have to have used the mark firstly. In other Countries you can get a trade mark with no use whatsoever and even then not show any for first 5 years, or maybe3 if you get real clever opposition.

  2. Mike Grant says:

    One of the things that will cause problems as well is the fact that, and get this, the USA is not the only Country in the World !.Really. For one example, trade marks can be obtained in certain Countries with NO prior use at all, and are valid 5 years before anyone can mount a serious challenge. Hmm, me thinks I might get more of them and turn poacher from gamekeeper (not really).

  3. JS says:

    That’s what I meant Mike, that ICANN did not discriminate TMs based on jurisdiction of the filling, “which in theory could make it even easier to game the system”.

    🙂

  4. JM says:

    Great analysis Kevin. At this stage, we hope a deal can be reached in a timely fashion. The GAC must realise a multi-stakeholder model will involve some compromise on its part as well.

    It’s a good time to move forward and internalise the many lessons from this process for ICANN and for stakeholders. The new TLD process will certainly improve over time with future rounds.

    In some ways, it feels like the GAC is trying to solve the problems of the last market, many of which will change or be resolved simply by introducing new TLDs.

    For example, brand + keyword is much less important if you own a .brand, and can market that as authentic.

    Indeed, many companies could save money by reducing phishing risk, sun-setting their domain portfolios, and in tandem marketing their ‘right of the dot’ brands.

    The GAC might consider seeing how this round goes and committing itself to proactively monitor the market and impacts over the next 3 years, perhaps commissioning independent studies itself so it can argue from facts, then make recommendations for improvement.

    Right now, it tends to argue based on informal information not backed up with evidence, and which speculates about the shape of a new market that doesn’t yet exist, which weakens its position.

    By launching the programme, we’ll get the data we need to make relevant decisions that protect business and consumers.

  5. gpmgroup says:

    By launching the programme, we’ll get the data we need to make relevant decisions that protect business and consumers.

    I think is more sensible to work through the issues before launch. Finding an equitable solution after the fact is always a lot more time consuming and more costly.

    .xxx and .jobs illustrate just how expensive and messy it can get once people believe they have rights or feel they have been treated inconsistently.

    Unfortunately it is domain registrants and ultimately consumers who have to pick up the tab for resolving these issues, while those directly responsible for creating ambiguity and inconsistency are rewarded rather than being held accountable for trying to perpetuate their own beliefs no matter how lacking in common sense those beliefs are.

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