Posted by David Taylor and Daniel Madden, Paris office
The Internet Corporation for Assigned Names and Numbers (ICANN) successfully launched the application process for new generic Top Level Domains (gTLDs) on 12 January 2012. The application period for new gTLDs closed on 30 May 2012. On 13 June 2012, ICANN published the details of the applied for new gTLDs, along with the public portions of the 1,930 applications.
At the same time, ICANN opened up the Application Comment Forum which enabled interested parties to submit comments on the published portions of the new gTLD applications. This period was initially scheduled to run for 60 days, but was extended by another 45 days.
The question of rights protection mechanisms (RPMs) for trade mark holders in the new gTLDs was a much discussed topic during the drafting of the New gTLD Applicant Guidebook (AGB) with substantial input from the intellectual property community and other interested parties.
In order to address the overarching issue of suitable RPMs for trade mark holders ICANN created the Implementation Recommendation Team (IRT) to identify and propose a range of measures designed to protect trade mark holders in the new gTLDs.
As a result of this, the proposed RPMs in the AGB are a mandatory pre-launch Sunrise period, a mandatory Trade Mark Claims service during the first 60 days of the launch of general domain name registrations under each new gTLD (both of which will be supported by the Trade Mark Clearinghouse), the Uniform Rapid Suspension Procedure (URS) and the Trade Mark Post-Delegation Dispute Resolution Procedure (PDDRP). All of these RPMs were subject to intense scrutiny and were fiercely debated by the ICANN community during the iterative drafting process of the AGB.
The debate regarding the new gTLD RPMs has been reignited by members of the United States Congress, who sent a letter to ICANN on 7 August 2012 asking for further details on the RPMs and assurances from ICANN that sufficient safeguards had been put in place to protect against increased risks of cybersquatting, fraud and abuse in the new gTLD name space. The letter from US Congress focuses on the mandatory Trade Mark Claims service and the Sunrise period.
As set out in the AGB, the Trade Mark Claims service would notify trade mark holders who had registered their trade marks in the Trade Mark Clearinghouse when a domain name was applied for that exactly matched their trade mark. Likewise, the registrant of the domain name would also be informed that the domain name they had applied for matched a trade mark in the Trade Mark Clearinghouse. As matters currently stand, new gTLD registries are only required to operate the Trade Mark Claims service for the first 60 days of general domain name registrations.
However, there have been several recommendations from the intellectual property community to make improvements to the Trade Mark Claims service. Included in these suggestions is that the Trade Mark Claims service be extended to run in perpetuity for the lifetime of the gTLD Registry. In addition to this, it has also been put forward that notifications should be sent to trade mark holders when a domain name is registered that is an exact match of their trade mark plus a keyword, for example <anchovydomains.tld>.
Both of these points were raised by US Congress in their missive to ICANN and confirmation sought if there was any reason why ICANN could not implement these changes to the Trade Mark Claims service. Concerns were also raised over the prospect of price gouging during the mandatory Sunrise period for trade mark holders in the new gTLDs. Based on the experiences of previous Sunrise periods for TLD launches, many trade mark holders fear that they will be charged inflated registration fees during the Sunrise period in order to protect their brands. On this basis, US Congress wanted to know what policies ICANN had in place to prevent new gTLD Registries from indulging in this practice.
ICANN’s reply to US Congress came on 19 September and was sent by newly appointed ICANN President and CEO, Fadi Chéhade. Mr Chéhade’s letter made it clear that ICANN’s position is that the RPMs outlined in the AGB are highly unlikely to be changed by ICANN at this stage and pointed out that the RPMs had been designed and agreed upon by the ICANN community. As such, the letter points out, ICANN is not in a position to make any changes with regard to the Trade Mark Claims service and the duration and nature of this RPM without consulting the community. However, Mr Chéhade did point out that new gTLD applicants were incentivised to offer RPMs that went beyond the minimum requirements as set out in the AGB.
However, indications are that changes could still be made. According to Bruce Tonkin, Vice Chair of the ICANN Board, if the various groups seeking improvements to the RPMs as contained in the AGB were able to find common ground on their various positions and present this to the ICANN Board as a consensus driven, community position then some of the recommendations could potentially be implemented. Whether common ground can be found remains to be seen, but there is certainly a level of consensus building, but against this there are many gTLD applicants and other community members who believe that the AGB should not be changed at this stage in the application and evaluation process.
Some of the key points being made include the significant issues identified in running the URS at the low cost initially envisaged, thus consideration of the possibility of default judgements if a URS respondent does not reply and the loser paying the filing and panel fees, and the Sunrise period allowing for brand owners or victims of cybersquatting to “block” the use of trade marked terms at the second-level beyond a Sunrise period, and the Trademark Claims service operating a broader match and lasting longer than 60 days as mentioned earlier.
In addition we are seeing considerable implementation discussion with regard to the Trade Mark Clearinghouse with the registries putting forward new proposals and at present ICANN seemingly resisting these. The registries believe their model is not only better for the registries to implement, but also presents some significant advantages for trade mark owners over the ICANN model, including greater privacy and security protections.
In any event, RPMs now appear to be back in the thick of the debate surrounding the new gTLDs.
Hogan Lovells has been closely following ICANN’s proposed launch of new gTLDs and partner David Taylor was a member of the Implementation Recommendation Team advising ICANN on trade mark protection issues linked to new gTLDs.