Posted January 26th, 2010
Most people would agree that in all areas of life, it is best to hope for the best but to be prepared for the worst. We keep fire extinguishers in our homes, earthquake kits in our cars and wear helmets when we ride our bicycles. We can anticipate problems that might arise and prepare for them. If this logic were subscribed to, it would then follow that prior to embarking on a large-scale business endeavor one would want to take every measure to prepare.
The road to the new gTLD rollout is pitted with disagreement regarding the anticipation of what the first round of applications will actually look like. Although the process of introducing new gTLDs is not untested, there has never before been the prospect of introducing a potentially unlimited amount into the DNS. Thus, applicants and administrators are fervently trying to discern the scope of resources needed to push the program forward and how those resources will be allocated. There are questions of how ICANN will adequately prepare for the rollout, how the revenue generated by application fees will be used, and what the staffing and legal needs will be. It is impossible to have an absolutely precise picture of what the rollout will look like without the aid of a time machine, but it is possible to remove some of the mystery from the process.
At the ICANN meeting in Seoul in October 2009 the idea of a pre-application Expression of Interest was floated. A Working Group comprised of members from several different constituencies and groups within ICANN then formed to work out the details and logistics of what an Expression of Interest period would look like. What they came up with is an interesting solution to the problem of how to prepare for a successful application round.
Essentially, the Expression of Interest or EOI is a pre-application round for those who intend to implement and operate a new gTLD. It is an opportunity for those who are planning to apply for a new gTLD in the first round to set the process in motion, get a clearer picture of how many applicants will participate in the first round, whether they will have competition (providing a pre-application opportunity to work out a situation with competitors) and allowing a pre-application round assessment of the scope of resources needed to operate as smooth and successful a process as possible.
Tags: EOI, ICANN, new gTLDs
Posted in gTLDS, ICANN, Know Your Domains by Kelly Hardy
Posted January 21st, 2010
Trademark protection is a difficult job for large corporations and mark holders under any circumstance, however add to it the possibility of unlimited new gTLDs and the potential combination of trademark violations within each and a unique situation presents itself.
Companies and mark owners who are just now getting the hang of protecting their marks in the domain space must become familiar with the mechanisms for trademark protection in this roll out. They will need to adapt to handle not only the volume, but also the nuances of deeper on-line trademark protection. While this is uncharted territory, it is also and exciting time for trademark law as it too will inevitably change to accommodate this widening of possibilities.
ICANN has been addressing the needs of the trademark community during this process as they arise. Several committees have been formed to assess needs, reports have been undertaken and findings debated. The latest has been the Special Trademark Issues report.
In October of 2009, the ICANN board sent a letter to the GNSO asking that the policy implications for two Trademark protection mechanisms laid out in the Implementation Recommendation Team (”IRT”) report dated May, 29, 2009. They were given the option to stay with the model based on the IRT report proposed by ICANN Staff, endorsing the model set out in the IRT report or come up with an alternative model of equal or greater value. In response, the GNSO formed the Special Trademark Issues review team. The team then developed an alternative proposal.
The STI report can be found HERE.
We spoke with Caroline Chicoine, former chair of the IRT (the IRT report can be found HERE) to analyze this new report
NameSmash: How did the STI report come about?
Chicoine: The STI Report is the result of an October 12, 2009 letter from the ICANN Board to the GNSO requesting that it provide input on two specific rights protection mechanisms (the “IP Clearinghouse” and the “Uniform Rapid Suspension sytem (URS)”) that have been proposed by ICANN Staff for inclusion in the Draft Applicant Guidebook (DAG). The ICANN Staff had based its proposed recommendations off of the recommendations contained in the IRT report. In response, the GNSO adopted a resolution creating the Special Trademarks Issues review team (STI) on October 28, 2009. The STI included representatives from the following groups: Commercial Stakeholders Group (which included 2 representatives each from the Intellectual Property Constituency and Business Constituency and 1 representative from the Internet Service and Connectivity Providers Constituency), the At-Large Advisory Committee, the Non-Commercial User Constituency, the Nominating Committee and an observer from the Government Advisory Committee; 2 representatives from the Registry Stakeholder Group and 2 representatives from the Registrar Stakeholder Group.
NameSmash: Can you explain the differences between the IRT report and the STI report?
Chicoine: To begin with, the GNSO (and thus the STI) were only asked to provide input on two of the recommendations mentioned in the IRT Final Report, namely the IP Clearinghouse (changed to the “Trademark Clearinghouse” (TC) by ICANN Staff and the STI) proposal, and the URS. Thus, the STI does not address any of the other recommendations of the IRT (i.e., the Globally Protected Marks List (GPML), Post-Delegation Dispute Resolution Mechanism, Thick Whois model, and the recommendation on use of the ICANN developed algorithm in the string confusion review during the initial evaluation). While ICANN Staff adopted the Thick Whois in version 3.0 of the DAG, it dropped the GPML and algorithm recommendations, and made significant (and in my opinion negative) changes to the IRT’s proposed Post-Delegation Dispute Mechanism. Given that the IRT presented its recommendations as a tapestry of solutions, I am very dismayed by how ICANN Staff completely unraveled the IRT proposals.
With respect to the TC, the key differences are as follows: The IRT Final Report recommended that the TC include unregistered rights. The STI Report states that there is rough consensus that the TC should include no common law rights except court validated common law marks.
The IRT Final Report recommended that the TC be able to accommodate all types of registered trademarks, including word marks and device (logo) marks that contain a word element. The STI Report recommends the inclusion of “text” marks only.
The IRT Final Report states that the TC should include all registered marks that are subject to “substantive review,” which should include review based on absolute grounds (e.g., genericness), even if no review is made during examination based on relative grounds (e.g., confusing similarity). The STI Report indicates that there is only rough consensus that the TC include registered marks form all jurisdictions (including countries where there is no substantive review).
To the extent that the TC could be used to implement the URS, the IRT Report recommends the inclusion of registrations based on absolute grounds (e.g., genericness), even if no review is made during examination based on relative grounds (e.g., confusing similarity). While the STI Report suggests that the TC could be used to enable URS procedures based on rights in jurisdictions where there is “substantive review”, it is not clear whether this includes review based on absolute grounds or only relative grounds.
The IRT Final Report recommended that the TC apply to IDNs. It is not clear whether the STI supports this view.
With respect to the URS, the key differences are as follows: The only remedy provided in the IRT Final Report is suspension of the domain name during the remainder of its registration, whereas the STI Report provides for an additional remedy where the successful complainant can pay to extend the registration period for one additional year at commercial rates.
The IRT Final Report proposed a period of 14 days in which to file an answer, whereas the STI Report provides for a 20 day period provided there is the issuance of an expedited decision (i.e., 3-5 days).
With respect to appeals, under the IRT Final Report, if the complaint is granted, the Registrant may request reconsideration on the original record by a URS ombudsman on the grounds that the decision was arbitrary and capricious or an abuse of discretion by the Examiner. The STI Report does not provide for an ombudsman option. Instead, the STI Report provides for an appeal of a URS decision to a three-member panel upon payment of appropriate fees.
Under the IRT Final Report, if a Complainant has been held to have filed abusive complaints on three occasions, the Complainant will be barred from using the URS for a one-year following the date of the last abusive complaint. Under the STI Report, the penalties for abuse are as follows: – 2 abusive complaints or 1 finding of deliberate material falsehood, barred from URS for 1 year; 2 findings of deliberate material falsehood, permanently barred.
Again, to the extent that the TC could be used to implement the URS, the IRT Report recommends the inclusion of registrations based on absolute grounds (e.g. generic-ness), even if no review is made during examination based on relative grounds (e.g. confusing similarity). While the STI Report suggests that the TC could be used to enable URS procedures based on rights in jurisdictions where there is “substantive review”, it is not clear whether this includes review based on absolute grounds or only relative grounds.
NameSmash: Do you feel that STI report is appropriately protecting trademark holders?
Chicoine: I believe any proposal (like that of the STI) that provides trademark owners with rights protection mechanisms over the status quo is a step in the right direction. Moreover, it is important to note that the starting point for the STI’s work was ICANN’s Staff’s proposals in DAG3 and not the IRT Final Report. I commend the STI on reaching unanimous consensus on numerous points about both proposals to which the IRT supported, and most importantly recognizing that the URS must be mandatory for all new gTLDS, and that it must be reviewed in a year so that ICANN can determine whether some of the concerns regarding its effectiveness (in particular with respect to costs and the absence of a loser pays model and transfer remedy) come to fruition.
NameSmash: Can you tell us how trademark holders will be protected through URS and whether URS will be effective for trademark holders in countries that have more relaxed trademark standards?
Chicoine: The URS was designed by the IRT to address efficiently and cost-effectively the most clear-cut cases of trademark abuses not yet addressed by current available remedies (i.e., the UDRP), while balancing against the potential for an abuse of the process. Even under the STI’s proposal, trademark owners will no longer have to wait 45-60 days and pay $3,000 to get a decision, not to mention the time and costs associated with managing a portfolio of hundreds of unwanted domain names. Again, if the STI recommendations limit the URS to registrations that are subject to review based on relative grounds, trademark owners only having registrations in such jurisdictions would be at a significant disadvantage.
NameSmash: What are your predictions for the outcome of this process?
Chicoine: Well, we already know that the GNSO resolved (1) to approve the overall package of recommendations contained in the STI Report, and (2) that the STI proposal to create a Trademark Clearinghouse and a Uniform Rapid Suspension procedure as described in the STI Report are more effective and implementable solutions than the corresponding Staff implementation models that were described in memoranda accompanying the DAG3, and (3) to direct Staff to forward the recommendations to the Board in response to its 12 October 2009 letter so that they will be posted as soon as possible for a public comment period that will end on 26 January 2010 to allow the ICANN community to comment on the STI recommendations prior to finalization of the model to be included in the next iteration of the DAG. Given the GNSO motion passed unanimously by a roll call vote of all Council members present, and unless there is a significant wave of objections to the STI Report by the public, I would be hard pressed to think that ICANN would not proceed to finalize the STI recommendations and include them in the next version of the DAG.
The public comment period for the STI report will remain open until January
26, 2010. As always, we encourage you to comment. Your opinions can help shape
the scope of trademark protection moving forward in the new gTLD process. If
potential problems are identified and addressed early on in the process it will
save everyone, especially trademark owner’s time, money and heartache
in the long run. Comments can be made HERE.
Tags: Caroline Chiccone, DAG, GAC, GNSO, ICANN, IRT report, new gTLDs, STI report, trademark clearing house, trademark protection mechanisms, URS
Posted in gTLDS, ICANN, Internet Security, Know Your Domains by Kelly Hardy