As we previously reported, the Internet Corporation for Assigned Names and Numbers (ICANN) released a revised Draft Applicant Guidebook relating to its plans for the expansion of gTLDs (generic top-level domains). To identify and resolve potential issues for trademark holders in the implementation of new gTLDs, ICANN formed the Implementation Recommendation Team (IRT) comprised of representatives from a variety of constituencies, including private practitioners, in-house attorneys for brand owners, registry and registrar representatives, and other domain name and trademark experts from around the world. While there has been criticism of the IRT, including lack of transparency, the group has provided to ICANN its recommendations and proposed several solutions to combat trademark infringement in the implementation of new gTLDs. The draft report was released on April 24, 2009, and although the time period for comment closes on May 24, 2009, IRT has indicated that it will only consider comments submitted by May 6, 2009 before issuing its final report. There has been additional criticism regarding the short time period for comment regarding an issue of great impact to trademark owners, with some members of the community requesting additional time. The full contents of the Trademark Protection Draft Report can be viewed at http://www.icann.com/en/announcements/announcement-24apr09-en.htm.
In preparation for and during the IRT's meetings, the group considered and reviewed numerous proposals that had been set forth in comments to the initial Draft Applicant Guidebook. The categories of reviewed comments included: comments on the guidebook; pre-launch mechanisms; post-delegation at the top level domains; post-delegation at the second level domains; and dispute policies.
The IRT's draft recommendations include the following: creation of an IP Clearinghouse, Globally Protected Marks List and associated rights protection mechanisms, and standardized pre-launch rights protection mechanisms; creation of a Uniform Rapid Suspension System ("URS"); post delegation dispute resolution mechanisms at the top level; WHOIS requirements for new TLDs; and use of algorithm in string confusion review during initial evaluation.
With the creation of an IP Clearinghouse, a representative of a rights owner would pay a fee and submit data to the IP Clearinghouse. This data would be validated initially and every year thereafter to ensure accuracy. The validated data would then be available in the IP Clearinghouse for new gTLD registry operators or pulled by registries or registrars for use in applications such as a Watch Service to notify rights owners of applications for a term corresponding to their mark or in an IP Claims Services that would notify applicants and trademark owners that a current validated right exists on a term being applied for.
The Clearinghouse could also be utilized in a Uniform Rapid Suspension System (URS) that would be a quicker and less expensive alternative to a UDRP proceeding for domain names that infringe IP rights or that support malicious behaviors. The URS would only be used for those cases in which there is no genuine question as to the infringement and abuse that is taking place. While more cost effective and swifter than a UDRP, the procedure would only result in the taking down of content and locking of infringing domain name registrations for the life of the registration, but would not result in the transfer or cancellation of a domain name registration.
In addition, it is proposed that a Globally Protected Marks List be created to assist in blocking applications for such terms at the top and second levels. The intention of this list is to include only marks that are globally protected and well-known, with high standards for inclusion and enforcement.
Submitting data stored in the IP Clearinghouse to registries during Pre-Launch periods may also provide a cost savings to trademark owners who might otherwise need to submit the same data several times for verification at multiple registries, while ensuring consistency of validation.
The IRT has also proposed maintaining WHOIS information for domain names under a "Thick WHOIS" model, which is controversial with privacy rights advocates. This "Thick WHOIS" model would create a central, registry-level provision of WHOIS information for all domain names registered within the registry, rather than the current model whereby each registrar may maintain their own database, with varying degrees of disclosure of information. The IRT also recommended that ICANN begin to explore the establishment of a central, universal WHOIS database to be maintained by ICANN.
Although the IRT was ambitious in its undertaking and proposed recommendations, the committee has itself noted that it does not have the final solutions or details for its proposals in protecting valuable trademark rights. The IRC has requested additional comments and proposals from the domain name community before submitting its final report for consideration by the ICANN community at its meeting in Sydney in June 2009.
Vol. 53, June 2010