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Three Small Victories in the Trademark Battle Against ICANN
December 22, 2009
Brand owners have won three small victories in the fight to protect trademarks when ICANN launches its new Top-Level Domain Name ("gTLD") program.1 In response to outcries from trademark owners, the Internet Corporation for Assigned Names and Number (“ICANN”) has axed its previously announced first quarter program launch date for the new gTLD program in favor of a yet to be determined timeline. ICANN has also developed an initial Expressions of Interest program that hopefully will enable trademark owners to identify and assess future gTLD threats months before the release of any new domain names. Furthermore, ICANN is once again soliciting public comments on a newly revised set of trademark protection mechanisms.
Although significant, these three small victories should not lull trademark owners into a false sense of security. Rather, while ICANN stalls to address overarching implementation issues, including trademark protection mechanisms, brand owners should welcome this delay and use it wisely to secure unregistered trademarks in various regions of world and further comment on ICANN’s proposed trademark protection mechanisms.
Victory # 1: Implementation Delayed . . . Indefinitely
At ICANN's 36th public meeting held in Seoul, Korea, on October 25-30, 2009, ICANN staff announced a revised target date for the gTLD expansion program launch.2 Instead of setting a target date, a target quarter, or even a target year, ICANN indicated that the launch date would be dependent on community efforts to find solutions to overarching issues affecting the new program’s implementation. Such overarching issues include mitigating malicious conduct with respect to new gTLD registrations, scaling the domain name system root zone to technologically accommodate hundreds of new gTLDs, securing and stabilizing the new Internet architecture, validating the economic viability of new gTLDs, and implementing rights protection mechanisms that protect and benefit brand owners while simultaneously facilitating the growth and expansion of the Internet.
ICANN’s new ambiguous, "slow down and get it right"3 approach prompted some in the community, and a particular number of those in attendance at ICANN’s annual meeting, to question ICANN’s actual determination to launch the new gTLD program. Particularly, Kurt Pritz, ICANN's Senior Vice President of Services, repeatedly emphasized ICANN's support for launching the new gTLDs, saying, "[i]t's the intention that new gTLDs will be introduced."4 When pressed by one attendee for a clear yes or no affirmation that the new gTLDs are going to be introduced Pritz answered, "[i]t's an ICANN strategic plan that one of the most important things it can do is open up the domain space in a way that … achieves the goals. So yes. I will say yes."5 Although ICANN remains committed to the expansion of gTLDs, brand owners can take heart that ICANN has heard their voice and is taking steps to carefully address trademark protection issues.
Victory # 2: A New Hurdle for gTLDs
In an effort to solidify ICANN’s position that it remains committed to introducing new gTLDs (at some point in time), at the October meeting, ICANN’s Board of Directors passed a resolution affirming that “work continues on the remaining issues that need to be resolved by the community prior to the launch of ICANN’s next round of gTLDs and directing ICANN staff to 'study the potential impact of a call for formal ‘Expressions of Interest.' ”6 By seeking formal Expressions of Interest from potential new gTLD registrants, ICANN expects to be better able to understand the economic demand for new gTLDs and the number and type of new gTLDs to be sought by potential gTLD applicants.7
Particularly, on December 18, 2009, ICANN released a Draft Expressions of Interest/Pre-Registration Model for soliciting Expressions of Interest for new gTLDs from interested applicants.8 According to the model, responses to the request for Expressions of Interest would be mandatory for eligibility to submit a gTLD application in the first round, and any such interested applicants would be required to submit their request along with a $55,000 non-refundable deposit which would be credited against the total cost of the new gTLD upon issuance.9 Any Expressions of Interest applications would also be required to contain a specific set of information concerning the participating entity, including, the string intended to be registered as a gTLD. In accordance with ICANN's commitment to full transparency,10 this information would be publicly disclosed through the ICANN website.
Notable, because Expressions of Interest would be received and published by ICANN prior to the formal registration and release of any new gTLDs, trademark owners would be provided with a mechanism for advanced notice of upcoming gTLD threats. Furthermore, because the proposed Expressions of Interest program would be mandatory for first round gTLD applicants and be accompanied by a substantial fee, trademark owners could reasonably rely on submitted date to accurately predict, assess and take action against future gTLD registrations. Accordingly, should the Expressions of Interest program become permanent, trademark owners should monitor these filings/publications in a similar manner to filings with a government office which registers trademarks, e.g., the United States Trademark Office, and be prepared to take action should their trademark(s) be placed at risk by a potential gTLD registration.
Victory # 3: Some Protections Are Better Than No Protections
Additionally, the Generic Names Supporting Organization ("GNSO"), ICANN's standards setting body, adopted a resolution creating a Special Trademarks Issues ("STI") review team to analyze the Trademark Clearinghouse and the Uniform Rapid Suspension System ("URS") that previously had been proposed by ICANN.11 The STI is made up of twenty-one (21) members representing various industry sector groups including commercial stakeholders (i.e., businesses and trademark owners), non-commercial stakeholders (i.e., community groups), registrar and registry stakeholders, and government stakeholders. Rather than approving ICANN's proposals, the STI published a "Special Trademark Issues Review Team Recommendations" which describes an alternative rights protection mechanism model that "reflects compromises made by each of the stakeholder representatives in an effort to find a solution that would be more effective and implementable" than the ICANN model.12
The revised Trademark Clearinghouse would serve as a "convenient location to store registered trademark information in a centralized location on behalf of trademark holders" in order to streamline rights protection mechanisms such as (1) a "Trademark Claims" service to provide notice to trademark owners of any new domain name registrations matching their trademarks and notice to registrants that matching trademark registrations exist, or (2) a "Sunrise Period" during which trademark owners could register domain names matching their trademarks recorded with the Trademark Clearinghouse prior to general registration of domain names on a new gTLD.13 With respect to the URS, the STI reached a consensus that the URS procedure would "provide trademark holders with a cost effective, expedited process" to combat "clear cut instances of trademark abuse."14
Although commercial and business representatives were ultimately unsuccessful in securing heightened trademark rights protection mechanisms, such representatives included a thorough and detailed minority position statement as a part of the STI's report which calls for increased protections at little or no cost to the trademark owner. In addition to providing support for their objections to the STI's revised proposal, the minority position statement outlines constructive suggestions for improvement that may optimistically (and with the urging of the public) be considered by ICANN in its implementation of STI's proposals. In this instance, in the face of other STI stakeholders calling for a complete reversal of ICANN's proposed trademark procedures, "something is better than nothing."15
Continue Fighting to Win
Although trademark owners should be complimented and take heart that their actions, e.g., letter writing and other noted opposition, are having a significant impact, particularly by slowing down ICANN's implementation of gTLDs without providing effective procedures to fully vet rights of trademark owners, these three small victories are not set in stone. ICANN may reverse its position on these issues at any time. Accordingly, trademark owners should continue fighting for enhanced, low-cost trademark protection mechanisms in order to ensure an ultimate victory in this battle. Particularly, in follow up to these recent developments by ICANN and in addition to monitoring developments and attending public meeting when available, trademark owners should immediately inform ICANN as to the continued need for enhanced trademark protection mechanisms using one or more of the following:
1. Submit public comments regarding the Special Trademark Issues Review Team Recommendations on Trademark Protection in New gTLDs, on or before January 26, 2010, at http://www.icann.org/en/announcements/announcement-2-17dec09-en.htm.
2. Submit public comments regarding the Proposed Draft Expressions of Interest / Pre-Registrations Model, on or before January 27, 2010, at http://www.icann.org/en/announcements/announcement-2-18dec09-en.htm.
By continuing to pursue ICANN on these issues, the likelihood of enhanced protections for trademark owners is increased. The message is simple: continue the good fight, and do not give up until victory in this battle is assured.
Jeffrey S. Whittle, Jonathan Hance, Ryan D. Gum, Michael R. Samardzija, Ph.D., and Jay Yates
1 See Jeffrey S. Whittle, Constance Gall Rhebergen, Jonathon K. Hance, and Jay Yates, Feature Article: Land Rush in Cyberspace: ICANN's Proposed Game-Changer and Its Impact on Trademark Rights, 1 BLOOMBERG TECH. LAW 1 (July 27, 2009), available at http://www.bracewellgiuliani.com/dir_docs/news_publication/51390da3-2d3e-456a-8790-12e79e9def83_pdfupload.pdf (last visited December 22, 2009) (providing information regarding ICANN's proposed release of new domain names and the effects of such a program on trademarks).
2 Internet Corporation for Assigned Names and Numbers, Soul Meeting Briefing Note (November 6, 2009), http://sel.icann.org/briefing-note (last visited Dec. 18, 2009).
3 Internet Corporation for Assigned Names and Numbers, Transcript of New gTLD Program Overview, ICANN Meeting, Seoul, Korea (October 26, 2009), statement of Kurt Pritz, Senior Vice President, Services, ICANN, available at http://sel.icann.org/node/6739 (last visited Dec. 21, 2009).
6 Internet Corporation for Assigned Names and Numbers, Adopted Board Resolutions, Seoul, Expressions of Interest in New gTLDs (October 30, 2009), http://www.icann.org/en/minutes/resolutions-30oct09-en.htm#5 (last visited December 21, 2009).
8 Internet Corporation for Assigned Names and Numbers, Aspects of an Expressions of Interest and Pre-Registration Model (December 18, 2009), http://www.icann.org/en/topics/new-gtlds/eoi-model-18dec09-en.pdf (last visited December 21, 2009).
9 See id. at 11 (stating that the deposit of $55,000 would be considered as a credit against the eventual $185,000 fee that would accompany submission of a new gTLD application).
10 Internet Corporation for Assigned Names and Numbers, Affirmation of Commitments by the United States Department of Commerce and the Internet Corporation for Assigned Names and Numbers (September 30, 2009), http://www.icann.org/en/announcements/announcement-30sep09-en.htm (last visited December 21, 2009).
11 See Jonathon K. Hance, Ashley L. Kirk, Jeffrey S. Whittle, and Jay Yates, Land Rush in Cyberspace Update – Act Now (October 12, 2009), http://www.bracewellgiuliani.com/index.cfm/fa/news.advisory/item/e36d5b22-be58-475e-bfb4-42f034cd2a53/Land_Rush_in_Cyberspace_Update__Act_Now.cfm (last visited December 22, 2009) (providing further information on the rights protection mechanisms reviewed by the GNSO).
12 Internet Corporation for Assigned Names Numbers, Special Trademark Issues Review Team Recommendations 2-3 (December 17, 2009), http://gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf (last visited December 21, 2009).
13 Id. at 4-14.
14 Id. at 15-25.
15 Id. at 31.