As we have previously reported, the timeline for launch of new gTLDs by ICANN has slowed while there is continuing evaluation of overarching issues, including trademark protection. In its Third Draft Applicant Guidebook, ICANN staff had proposed a number of trademark-protection mechanisms, including provisions for creation of a Trademark Clearinghouse ("TC"), which would make verification of rights easier when a new gTLD is in a sunrise period prior to launch. The Draft also proposed the creation of a Uniform Rapid Suspension System, which is a post-delegation dispute-resolution mechanism intended to more swiftly and less costly address the most obvious cases of trademark infringement or cybersquatting in domain names. Subsequent to the latest Guidebook proposal, a Special Trademarks Issues (STI) review team was created to further analyze the proposed rights-protection mechanisms. The STI team consisted of representatives from the various ICANN constituencies, including business and intellectual-property constituencies. The STI recently issued its recommendations, which are available at www.icann.org and open for comment until January 26, 2010. These recommendations provide greater detail to the processes than previous recommendations did, and in some cases are more limited in scope of protection.
In the Trademark Clearinghouse Proposal, the team consensus was that the Clearinghouse was not a rights-protection mechanism, but was to be used as a beneficial implementation tool for rights-protection mechanisms, such as during a Sunrise or Trademark Claims period of a new gTLD. The Clearinghouse is to be operated by an arms-length contractor, who would validate the trademarks included in the TC and create a centralized trademark database to provide information to the new gTLD registries. The database would include only "text mark" trademarks from all jurisdictions, which were nationally or multinationally registered, including countries where there is no substantive review. However, equal protection would not be required to be provided by registries to marks registered in a country with no substantive review. Common-law rights would be excluded from the database, except for court-validated common-law marks.
The TC database would only be used for validation during pre-launch of a new gTLD, and would not be used post-launch to screen requested domain names for trademark matches. The matches reported to a registry would only include identical matches between the domain name string and validated trademarks. The proposal states that inclusion of a validated mark in the TC database is not proof of any right, nor does it confer any rights on the trademark holder. Conversely, failure to file should not be perceived to be a lack of vigilance by trademark holders.
A minority opinion from the Intellectual Property Constituency objects to the unequal protection of no-substantive-review marks. It notes that this might prejudice marks from a large number countries, including most of Europe, which do not engage in substantive review. It might also prejudice small businesses and not-for-profits whose budgets may not allow for a global registration program beyond their home country.
The Business Constituency and At-Large Advisory Committee also objected to the "identical match" provision. They suggested that a "match" between a validated mark and requested domain name should include the Mark plus significant words from the class description in the Nice Classification system, as was used in the .ASIA Sunrise period. This would further deter cybersquatters and curb registrations of domain names that include a trademark along with common words associated with it.
In the proposed Uniform Rapid Suspension Procedure (URS), the consensus of the STI Review Team is that the procedure would be a beneficial rights-protection mechanism for inclusion in the new gTLD program. Whereas the Draft Guidebook proposal made the URS optional for new registries, the STI team calls for mandatory use of the URS for all new gTLDs. It is intended to be a post-delegation dispute-resolution mechanism to more swiftly and less costly address the most obvious cases of trademark infringement or cybersquatting in domain names. However, some constituencies question its effectiveness, cost and time savings when comparing it to the UDRP procedure.
In a URS, a Complainant would need to satisfy the same elements as in a UDRP, but with a higher burden of proof. Namely, a URS Complainant would need to establish clear and convincing evidence that there is no genuine issue of material fact requiring further consideration. Upon the filing of a complaint, and passing initial examination, an "Initial Freeze" status would be applied to the domain name. The freeze would dictate that the domain name cannot be transferred and the WHOIS record cannot change, but the domain name would still resolve to the original IP address and all features of the domain would still function (e.g. resolving to a website, routing e-mail). However, the effect of a decision in favor of the Complainant is limited. Rather than allowing a transfer of the domain name as in a UDRP, a successful Complaint in a URS would only result in the domain name being placed in "hold" status. As a result, the domain name would still remain in the Registrant's name in WHOIS information during the course of the registration, but would no longer resolve to the original website, pointing instead to an informational web page provided by the URS service provider about the URS process.
While the initial intent was to create a streamlined and swifter version of the UDRP, the timelines of the proposal merely create a shorter timeframe for the examination process, while still allowing 20 days for the registrant to file an answer. Even if a registrant were to default, there is still the possibility of filing an answer within 30 days of a decision, or even later upon the payment of additional fees. Either party would have the right to seek a de novo appeal, along with the option of pursuing a UDRP or court action. Initial URS complaints would be decided by one panelist, while an appeal would be decided by a three-person panel. The URS would also call for penalties against trademark holders that try to abuse the process, along with penalties against Examiners who abused the process. The full URS process would also be subject to a review by ICANN one year after the first date of operation.
Minority positions were voiced again by the Business Constituency and At-Large Advisory Committee, requesting the transfer of the domain name in a URS. Otherwise, it would be necessary to file a UDRP if a cybersquatter registered a domain name that the trademark holder intended to utilize. With similar costs necessary to investigate and prepare a complaint for a URS, the cost savings in filing fees and minimal time savings may not be worth the limited value of placing the domain name on hold, while allowing it to be free for future registration upon expiration.
While the various constituency groups and stakeholders have had their voice in preparing a consensus Trademark Protection Proposal for use with new gTLDs, there is not full consensus on all issues. Trademark holders and other interested parties are encouraged to provide their comments to ICANN during the public comment period. The proposals presented by the STI team, along with public comments, will then be considered by ICANN when it finalizes the proposed model for trademark protection in the new gTLD program.
Vol. 53, June 2010