At the recent ICANN meeting in Sydney the Intellectual Property Constituency’s Implementation Recommendation Team (IRT) presented details of their recommendations. As expected, the recommendations were the subject of extensive and spirited discussion throughout the week-long meeting.
Members of the non-commercial user’s constituency were the most outspoken against the recommendations in general, calling for more detailed information and more precise descriptions of the types of abuse being targeted in the recommendations. On the other hand, The Government Advisory Committee (GAC) reported that it’s members benefited from the IRT briefings and the GAC believes that these are important issues that deserve focused attention to be resolved prior to the posting of the third version of the Draft Applicant Guidebook. Details of the presentations as well as a full transcript of the session are available by clicking here.
Summaries of Topic Discussions
The IP clearing house and IP claims concepts received strong support overall. As expected, there were many questions focused around who would create, operate and manage the clearing house and where the funding will come from. There were also discussions around other potential uses of the comprehensive database, and developing controls to ensure that the data wouldn’t be used for other than the intended purposes.
The proposed Globally Protected Marks List for protection of highly recognized names didn’t receive substantial support. The perception was such a list only benefits large businesses and offered no real benefit to the rest. Further, any minimum criteria likely would generate complaints from those who just miss making the list regardless.
The Universal Rapid Suspension System drew substantial criticism. More than a few saw the proposal as a replacement for the existing UDRP process. Several questioned the timing and mechanisms for notifying registrants of a dispute prior to a domain name being suspended. A number of opponents suggested considering URS elements as part of an overall review of the UDRP process. Ultimately there appeared to be a general willingness of agreement to improve the current dispute processes to assure mis-use by either respondents or complainants is avoided. The discussions between those for and against the URS made it clear that more detailed examples and cases of how the current system is being abused would help explain the reasoning for particular suggested changes.
ICANN is running further public forums to facilitate on-going discussions with the Internet community regarding workable solutions to some of the outstanding, overarching issues, particularly trademark protection and malicious behaviour. The forums will be in New York on July 13, London on July 15, Hong Kong 24 July, and Abu-Dhabi (tbd).
In advance of the organization’s June 24 meeting in Sydney AU, ICANN has published an analysis of the public comments to Version 2 of the Applicant Guidebook. The 214 page document lists a summary of comments by topic and ICANN’s analysis of the topic and proposed position. Click here to go directly to the document.
A number of key issues within the current applicant guidebook are yet to be resolved, but many proposed changes have been made and are now available for review and comment. The public review and comment period to the Revised Excerpts and Additional Explanatory Material on the changes opened on 31 May 2009 and extends through 20 July 2009.
Publication of the third, revised draft of the guidebook is pending resolution of overarching issues which has to happen before the first round of applications can begin. A key outstanding issue is protecting consumers and preventing abuse. A proposed measure that has ICANN support is the publication of a centralized, thick WHOIS database. This is seen almost universally as a way to lessen the burden on brand holders, law enforcement and others by helping to quickly and efficiently curb abuse in new gTLDs. In addition to recommending the thick WHOIS implementation, ICANN acknowledged the need for the development of an efficient mitigation processes at the registrar level and additional fine-tuning of proposed dispute resolution processes.
ICANN outlined plans to conduct consultative meetings on the numerous trademark issues beginning in Sydney in June, and continuing through July in other geographic regions on the effectiveness of proposals in addressing the overarching issues submitted by the IRT and others. The goal of the meetings is to resolve the outstanding issues in order to publish the final Applicant Guidebook in December 2009, allowing the first round of gTLD applications in the first quarter of 2010 as previously proposed. However, ICANN clearly stated there are no plans to launch the process absent resolution of the key outstanding issues.
ICANN’s Sydney meeting will be held 21-26 June 2009.
Click here to access the public comment analysis and the amended guidebook.
ICANN is moving ahead with the implementation of the new gTLD program and is putting a great deal of emphasis on addressing concerns that have been voiced since the original announcement.
The public comment period just closed on the 2nd version of the applicant guidebook, and ICANN announced plans to publish a summary of the comments prior to their meeting in Sydney Australia in June. These comments and the recent proposed solutions to trademark protection issues by the Implementation Recommendation Team (IRT) will be significant discussion topics of the meeting. While there are a number of details to be addressed, the IRT’s initial framework is a significant improvement to the process for granting rights protection and reducing the opportunity for intentional misrepresentation of trademarks.
After the Sydney meeting, ICANN is planning regional events (dates yet to be announced) in Europe, the Americas and Asia to get further input and refine and finalize the IRT recommendations. The plan appears to be to address the issues, and have a completely revised third version of the Applicant Guidebook published by early September. This would allow time for comments before the ICANN meeting in Seoul in October, and then issue a final draft of the guidebook in order to begin the initial round of applications in the first quarter of 2010.
Melbourne IT DBS held a webinar on the draft proposal from the IRT. To hear a recording of this session click here.
The ICANN Sydney Australia meeting will be held 21 – 26 June 2009. For details about the meeting go to: http://syd.icann.org/
The Implementation Recommendation Team (IRT) sanctioned by ICANN has provided the first draft of their trademark protection proposal.
The report describes in detail several proposed solutions to improve trademark protection in the new gTLD process. The two main elements are:
- A fee supported, IP clearinghouse of globally protected marks that would be provided to registies. Information would provided by rights holders and verified and updated annually by the clearinghouse, and pushed out to the necessary parties.
- Draft Uniform Rapid Suspension System (URS) procedure to provide a cost effective and timely mechanism for brand owners to protect their trademarks and to promote consumer protection on the Internet. The URS would allow for immediate protection response against malicious activities, but would continue to work in conjunction with the current UDRP process to resolve legitimate disputes.
Other consideration in the proposal include:
- Post delegation dispute resolution mechanisms at the top level
- Thick WHOIS model requirements for new TLDs
- Use of algorithm in string confusion review during initial evaluation
Melbourne IT will be conducting a webinar on Tuesday 5 May to provide details of the report’s recommendations and receive feedback from customers. Melbourne IT has been invited to provide input to the IRT team at its meeting on Monday, 11 May 2009, and information from the webinar will be the basis for our report to the IRT team.
The full report by the IRT can be vied by clicking here.
ICANN has announced the members of the Implementation Recommendation Team to work on the issues raised by trademark rights holders and the community at large regarding brand protection measures.
See: http://www.icann.org/en/topics/new-gtlds/irt-list-23mar09-en.pdf for the complete list of members of the committee.
Results of IRT work will be part of follow-on ICANN consultations regarding the overarching issues (see http://www.icann.org/en/announcements/announcement-3-18feb09-en.htm) identified in the new gTLD implementation work. Finally, any modifications to the implementation, embodied in the New gTLD Applicant Guidebook and registry agreements will be open to at least one more round of public comment and feedback.
March 17, 2009
Allegations of cybersquatting by trademark holders continued to rise in 2008, with a record 2,329 complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) administered by the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center.
In a report containing details on cybersquatting the WIPO Director General also took the opportunity to comment on the New gTLD process. “The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally,” said Mr. Francis Gurry, WIPO Director General. “Cybersquatting remains a serious issue for trademark holders .”
This statement comes after ICANN has agreed to form a committee specifically to address these and other concerns of trademark holders before moving forward with approving new gTLDs.
Read the full WIPO release
In last weeks webinar, Melbourne IT outlined solutions the company planned to propose around trademark protection at the time of registration and take down processes for malicious use of domain names.
These solutions were shared with brand holders in Mexico City. Other groups also joined in the discussion of possible solutions. Overall there was a willingness among the intellectual property, business users, registry, and registrar groups to work together to come up with implementable solutions.
As a result, the ICANN Board requested that ICANN’s intellectual property constituency convene an Implementation Recommendation Team to work to develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs. ICANN has allocated staff and travel funding for this group.
Melbourne IT will continue to work with this community to refine solutions further. The team has a deadline of 24 April 2009 to produce a draft report, and 24 May 2009 to produce a final report detailing potential workable solutions.
ICANN has responded to the US Department of Commerce letter calling for the completion of economic studies to support the need for New gTLDS.
On March 4, 2009 ICANN posted two reports by Dennis Carlton, a Professor of Economics at the University of Chicago in support of the economic benefits of New gTLD stated by ICANN. Professor Carlton was the highest-ranking economist in the Antitrust Division of the U.S. Department of Justice from 2006 to 2008, and currently is a Senior Managing Director of Compass Lexecon, a prestigious economic consulting firm specializing in competition matters.
To further address the comments from the DoC, ICANN has made the documents available for reading and comment. A public comment forum has been opened on these preliminary reports prepared by Professor Carlton for 45 days, until 17 April 2009. The complete Preliminary Reports and Public Comment Forum can be found by clicking here.
March 2, 2009
Kurt Pritz reported today that the final applicant guidebook is expected to be published around October 2009. Following publication of the guidelines, the first application submissions will be accepted in December 2009.
ICANN will initiate a significant communication program around the new proposal process two months before the release of the final guidebook.
ICANN acknowledges need to address trademark concerns for new gTLDs
In the open ceremony of the ICANN meeting in Mexico City, ICANN Chairman, Peter Dengate-Thrush confirmed the Board has very clearly heard the concerns of the business community about some aspects of the new gTLD process, and completely understands and wants to respect the rights of trademark holders.
He re-iterated that the Board is committed to addressing the concerns before opening the application process. ICANN now does not expect to accept New gTLD applications until December 2009 at the earliest.
ICANN to seek new CEO in 2009
The current CEO of ICANN, Dr Paul Twomey, has announced that he will not renew his term of CEO after his contract concludes on 30 June 2009. Paul has served as the CEO of ICANN for nearly 7 years. Paul will stay on as “Senior President” through the end of the year to advise the new CEO, and assist ICANN in further developing the process for new gTLDs and Internationalized Domain Names (IDNs), and managing the conclusion of the Joint Project Agreement (JPA) with the US Government.
0
Back to top