The fourth version of the Draft Applicant Guidebook (DAG4) on new TLDs was the subject of much debate at the recent ICANN Brussels meeting (at which Valideus was a silver sponsor).
| In the first in a series of short articles exploring the key issues discussed at Brussels, we examine what is perhaps the most contentious issue – trademarks and rights protection mechanisms for gTLDs. Forthcoming articles will examine issues of Malicious conduct, Security and stability, Economic impact, Geographic terms and Vertical integration.
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Trademark Clearinghouse: ICANN will shortly be posting an RFP for organisations who wish to run its Clearinghouse, which it describes as, “a central repository for information to be authenticated, stored and disseminated pertaining to the rights of trademark holders”. The Clearinghouse will hold a database of verified registered rights. Registry owners must implement either a Sunrise or an IP Claims system. They can pull from the Clearinghouse or have pushed to them lists of identical verified marks (no plurals or hyphens) thus saving the cost of having the same records validated time and again. As proposed by the Implementation Recommendation Team (IRT), the Clearinghouse should include trademarks registered at any national or multi-national registry without discrimination. However, ICANN formed a Special Trademarks Initiative (STI) team, the majority of whom were not practising trade mark attorneys, and asked them to review this proposal. Fearing gaming by speculators who obtained expedited marks in order to participate in earlier RPMs, the STI recommended that the Clearinghouse should exclude trademarks from countries that do not conduct substantive review. Neither the STI nor ICANN defined substantive review. Following a rearguard campaign by many IP organisations, ICANN finessed this debate by proposing that registries must recognise all marks from either “a jurisdiction that conducts substantive examination prior to registration” or that have been “Court or Trademark Clearinghouse validated”. Whilst this may be a practical solution, it does mean that the Clearinghouse will become “the arbiter of the validity of trademarks legitimately obtained”, as WIPO’s Erik Wilbers has said in a letter to ICANN.
URS: The Uniform Rapid Suspension Scheme was designed to tackle what the IRT describes as, “Slam-Dunk cases of cybersquatting” but through is now described as not fit for purpose. Although it can now be used by complainants with trade mark registrations from jurisdictions that conduct substantive examination (again undefined) and those with Clearinghouse validated marks, many issues remain: the burden of proof is higher than the UDRP; it is “Not for any proceeding where there is an open question of fact”; the loser does not pay; the cost has crept up from a recommended $100 to $300; there is no fast-track for defaults; the name is locked until renewal date with the possibility of a one year extension – there is no transfer of property; complaints can be up to 5,000 words long; panellists must be rotated; there is the possibility of an appeal stretching for two years after a decision; worst of all, with the possibility of the respondent applying for an extension to the Response Date, the URS could now take 45 days. This compares poorly with the eUDRP process: the first eUDRP managed through WIPO, Nokia Corporation vs. Jameela Seif took just 35 days between December 2009 and 2010.
The Post Delegation Dispute Resolution Procedure (PDDRP) was designed by the IRT to combat registry owners who act in bad faith, with intent to profit from the systemic registration of infringing domain names or who otherwise use a gTLD for an improper purpose. With the number of gTLD registry owners to increase by a factor of at least 10 and more likely 20 in the first round alone, it is possible that some owners will behave as some bad actor registrars have done, warehousing domains, using aliases to disguise transactions between networks of associated companies, declining to implement UDRP decisions or to maintain accurate whois data. Although the PDDRP as set out in DAG4 allows a trademark owner to instigate a complaint on the basis of infringement on a trade mark, the prospect of monetary damages has been removed. Once again, it is WIPO that is leading the charge to amend the PDDRP: “The scope of the current PDDRP – as limited to affirmative conduct – undermines the intended effect of encouraging responsible TLD management and domain name system credibility”. In a letter to Rod Beckstrom and Peter Dengate Thrush dated 16 June 2010, WIPO calls for “the very real possibility of wilful blindness occurring in the course of the management of the new domains…it is unconstructive to expect trade mark owners to perpetually turn to second-level enforcement in a multi-jurisdictional context. A pro-active approach would be to focus on the design of Safe Harbours – which would not include a sweeping policing duty for registration authorities”.
Start-up Rights Protection Mechanisms: ICANN now mandates that all applicants must implement at a minimum either a Sunrise or a Trademark Claims service during the Transition to Delegation of a character string. There is an encouraging additional comment that, “Registry operators may introduce additional rights protection measures relevant to the particular gTLD”.