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Trademarks may delay new TLD approval

Kevin Murphy, December 8, 2010, 23:55:04 (UTC), Domain Registries

The intellectual property lobby won a notable victory this week, after governments told ICANN they want it to delay approval of the new top-level domains program until it has more cybersquatting protections.
Some members of the Governmental Advisory Committee appear to have been lobbied hard by the IP community, and have taken its concerns on board more or less wholesale.
The UK representative, Mark Carvell of the Department for Business, Innovation and Skills, was most vocal during a meeting of the GAC and ICANN board here in Cartagena, Colombia yesterday.
He said of the proposed final Applicant Guidebook for new TLDs (which the GAC still pointedly refers to as the “DAG”, for Draft Applicant Guidebook):

Most representations we received came from brand owners, rights holders, they’re the ones being most agitated by this. I think they also recognized the potential opportunities, but the big issue for them was the costs…
The rights protection mechanisms are still not effective enough, that’s what’s coming to us in the Ministry… If you’re really hoping to sign off the guidebook this week, I think that’s something you really ought to reconsider.

Carvell pointed in particular to the proposed Trademark Clearinghouse and Uniform Rapid Suspension policies as needing work – this is essentially the IP lobby’s position also.
His views were supported by Germany, Norway and the Canadian GAC chair, among others.
A repeated refrain was “we’re not there yet”, which prompted ICANN vice-chair Dennis Jennings to push for a definition of “there”. What, in other words, would make the GAC happy enough to go ahead?
The GAC isn’t great when it comes to providing straight answers to those kinds of questions, but Carvell gave it a shot.
He said that currently the GAC does not believe that the benefits of new TLDs outweigh the costs. When it does, that would be the “key turning point”:

When we get to that position, that the benefits for businesses, for the global economy, for opportunities for business, are going to be greater, scaled-up, greater than the costs to brand owners and those who are going to have shell out big-time in order to effectively subsidize, in their view, perhaps subsidize the process.

The US representative, Suzanne Sene, added that “the whole issue is of feeling confident that benefits will outweigh the costs”.
That’s still worryingly free of a measurable benchmark, if you’re an impatient new TLD applicant.
In a further open meeting today, it became clear that the GAC is still putting forth the idea that there could be a “fast-track” or “trial” style TLD application round for “non-controversial” TLDs – presumably meaning TLDs of little interest to defensive trademark holders.
GAC chair Heather Dryden said today that “introducing a conservative first round is the best way to manage risk in the unknown”, an idea that was promptly challenged by TLD applicants including Minds + Machines CEO Antony Van Couvering.
I don’t get the feeling that the GAC has thought the idea through a great deal. In order to be half-way objective, it would presumably require the created of a second, parallel AGB for pre-approving applications. I don’t think the idea has legs.
But do the GAC’s objections mean that new TLD program, currently pencilled in to open the first application round May 30, 2011, will be delayed?
The GAC has not yet submitted its formal Cartagena advice (it should be published tomorrow), but it will presumably reflect the concerns raised over the last few days.
Under ICANN’s bylaws, the organization has to justify any decision to reject GAC advice and then “try, in good faith and in a timely and efficient manner, to find a mutually acceptable solution.”
European Commission representative Bill Dee invoked that part of the bylaws during yesterday’s meeting, and ICANN chair Peter Dengate Thrush agreed that talks were needed.
Dengate Thrush said he was in favor of a GAC-board meeting over one or two days at some point between now and the San Francisco ICANN meeting next March, to thrash out their differences and Dryden seemed to agree.
If that meeting was held fairly soon, it would not necessarily mean ICANN misses the May 30 deadline.
The current proposed timeline contains a 30-day window between Friday and January 11 in which ICANN staff update the “approved” AGB according to the board’s directions.
There follows an obligatory four-month ICANN outreach and marketing campaign.
Conceivably, although scheduling may be a challenge, if the GAC and board meet and resolve their differences over the next 30 days or so, the May 30 deadline could be workable.
I think it might be quite unlikely that’s going to happen, however.
The ICANN board convenes to discuss and vote on the AGB this Friday. It will be very interesting to see how its resolution is worded, and whether it can both save face and serve the GAC.

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Comments (8)

  1. MS says:

    I think once a delay to the new gtld process is certain, A limited ‘fast track’ will also be certain.
    Not sure on the logic behind continuing to delay existing idn gtlds until clarifying the remaining issues regarding the new gtlds (ascii and idn).

  2. andrew says:

    The best way to do a fast track is to basically auction of slots or to do a lottery. Yes, people will be mad, but it’s the only fair way.
    Kevin, what’s your take on what the board will actually vote on Friday? Couldn’t the resolution be merely “The Board will work with x, y, and z to finalize the Applicant Guidebook by January 31”? I don’t think its conceivable that they would flat out approve the guidebook given the new (and BIG) items inserted in the latest edition.

    • Kevin Murphy says:

      I don’t think auctions or a lottery would really address the GAC’s issues. They seem to have a specific type of “non-controversial” TLD in mind — essentially they don’t want any big open commercial generics or potentially controversial strings at the moment — which would mean there’d need to be some kind of, as Antony VC put it, “beauty contest” to decide who gets to apply and who doesn’t.
      As for my take on the board vote… this kind of thing is very hard to call. My hunch is that it may be along the lines you suggested, but I think it was always going to be that way anyway.

  3. […] GAC’s biggest problem with the new TLD program, as its members made clear in Cartagena and subsequently, is that it’s not convinced new TLDs won’t cost brand holders a […]

  4. […] But the rules are supported by ICANN’s intellectual property stakeholders, which have been fighting for stronger IP protections in the new TLD program for years and seem to be getting their way. […]

  5. Pro Se says:

    Is Mark Carvall aware of the fact that CentralNic’s uk.COM [.COM Domain Name] … was not … granted New gTLD status during / at or around, the time of ICANN’s meeting in Japan?
    Certainly Peter Dengate Thrush “knows” along with ICANN’ers Bret Fausett & Milton Mueller on the DNSO then representing “Trademark, intellectual property, anti-counterfeiting interests,” during the creation of what’s today’s IPC.
    Is Mark also aware, that ICANN’s IPC President’s Kristina Rosette and Greg Shatan both knowingly aid, abet & conspire to harbor CentralNic’s “quasi-ccTLDs” racketeering?
    Is he also aware that the next IPC President Brian J Winterfeldt LIED to a Virginia Court, saying the the .COM Domain Name of uk.COM is exempt from or beyond the American Lanham Act’s ACPA reach?
    FYI: Since Gerald Bruce Lee in ICANN’s At-Large’s Garth Bruen words, opted to “gamble” and “flush” the ACPA, these firms below listed have been victimized by ICANN Et Al’s Racketeering:
    This racketeering problem is something You’ve addressed, twice.
    1st Time:
    2nd Time:
    What’s interesting is that the two comments posted both came from ICANN’ers Michele Neylon and Rubens Kuhl.
    In closing Kevin, a reply is anticipated.
    Regards, Graham.
    GAC meeting ICANN – 2010.

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