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ICANN’s Implementation Recommendation Team published its final report, designed to minimise trade mark abuse in the new gTLDs. What have they proposed?
ICANN, the Internet Corporation for Assigned Names & Numbers, has embarked upon a process that could see up to 500 New gTLD (generic Top Level Domain) registries created from early 2010 onwards.
However, following the concerns expressed by literally hundreds of organisations about the impact of the process on the rights of others, the ICANN Board created an Implementation Recommendation Team (IRT) to consider whether standardised Rights Protection Mechanisms (RPM) could reduce the financial and administrative burden on rights owners.
On 29 May 2009, the IRT, which is composed of 18 experts in on-line rights protection including representatives from Microsoft, Yahoo!, Richemont, Lego , seven international law firms, a law school and Com Laude Managing Director Nick Wood, published its final report which is currently open for comment prior to consideration by the ICANN Board.
In an Open Letter to readers of the report, the IRT introduces its work, saying:
“Why did 18 people experienced in trademark protection on the internet come together to form the Implementation Recommendation Team (IRT)? What was it that motivated us to spend more than eight working weeks wading through over 900 pages of comment, meeting with a dozen expert witnesses, preparing draft after draft? After all, in attempting to craft a tapestry of interlinked recommendations that we believe are fair to everyone, it might be that we end up pleasing no-one? Was it because we support the concept of the expansion of the gTLD space unreservedly? Hardly. The views of the IRT reflect the views of business and trade mark interests in general. A sizeable number of our team would have preferred status quo with no new gTLDS until better Rights Protection Mechanisms are in place for the existing gTLDs. Others favoured the measured introduction of Sponsored or Community-based gTLDs. Some support the current expansion, seeing the advantages for commerce and the consumer alike in open competition and innovation.”
The final recommendations of the IRT include:
1. An IP Clearinghouse or centralised database of verified IPR to be operated by a neutral provider under contract with ICANN. The IP Clearinghouse will support:
- The validation of trademark rights on an annual basis which can be pushed to new gTLD registry operators or pulled by them to support pre-launch RPMs such as Sunrise schemes. This means that rights owners will not have to pay time and time again for the validation of data by registry after registry;
- A Globally Protected Marks List of “supernova” trademarks that can justify the term “Globally Protected” by demonstrating registration at a very high number of official trademark registries. Inclusion on the list will have the effect of limiting third-party applications for (a) top-level domains that match or are confusingly similar to trademarks on the list; and (b) second-level domains that match trademarks on the list;
- A Pre-Launch IP Claims Service that will notify new gTLD applicants and trademark owners that a current validated right exists for the identical term being applied for at the second level.
2. A set of standardised, minimum protections to be employed by all new gTLD registries to protect rights owners in cases where registry operators decide to use pre-launch RPM other than the IP Clearinghouse. These include Standardised Sunrise Eligibility Requirements (SERs) and a Sunrise Dispute Resolution Policy (SDRP).
3. A requirement for all applicants to describe in detail the RPM they will be offering at point of application.
4. A Uniform Rapid Suspension system (URS) to work upstream of the UDRP, providing “a low-cost and rapid means for taking down infringing domain name registrations, yet preserving a registrant’s right to a hearing and/or appeal”. This could see a domain name frozen by a complainant within a 30 day time frame for as little as $200. As the Report says, “The URS is not meant to address questionable cases of alleged infringement (e.g., use of terms in their generic sense) or for anti-competitive purposes or denial of free speech, but rather for those cases in which there is no genuine contestable issue as to the infringement and abuse that is taking place”.
5. A variation on a proposal made by WIPO to limit the possibility of systemic abuses by “bad actor” Registry Operators requiring them to submit to mandatory administrative proceedings where a third-party such as a rights owner has filed a complaint with ICANN. The proposed enforcement range from monetary sanctions through suspension to termination of contract.
6. An obligation on all new gTLD operators to provide registry-level WHOIS information (commonly called a Thick Whois, as offered by the .info and .biz registries). In addition, the IRT calls upon ICANN to fulfill a promise to provide a central, universal WHOIS database covering all gTLDs.
7. A revision to the String Confusion review that ICANN will undertake of all applications to include a “consideration of the aural and commercial impression (meaning) created by the string”.
To read a full copy of the IRT report, which includes flow charts of the URS and details of the IRT members, go to: http://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf. A 30 day comment period closes on 29 June 2009. Comments can be sent to
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and reviewed at http://forum.icann.org/lists/irt-final-report.
The IRT encourages all trademark owners and IP specialists to comment on its work. Criticism and comment, suggestions for improvement, new ideas – all can be submitted to ICANN. Past experience has shown that it is vital for rights owners to make their voice heard as it is anticipated that other members of the family of ICANN may seek to dilute the IRT’s recommendations.
Nick Wood
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1 June 2009
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