[kictanet] ICANN To IP Experts: Come Back With A Solution For Internet Trademark Protection]

alice alice at apc.org
Fri Mar 13 08:23:46 EAT 2009

12 March 2009

    ICANN To IP Experts: Come Back With A Solution For Internet
    Trademark Protection

By Monika Ermert <http://www.ip-watch.org/weblog/author/monika/> for 
/Intellectual Property Watch/ @ 1:00 pm

Trademark issues are emerging with the upcoming introduction of new 
generic top-level domains on the internet, and the board members of the 
body introducing the names has passed the ball back to intellectual 
property experts to find answers.

The Intellectual Property Constituency of the Internet Corporation for 
Assigned Names and Numbers (ICANN, the internet technical coordinating 
body) has been asked to work out a viable solution “no later than 24 May 
2009.” Trademark issues have been defined as one of four overarching 
issues still to be solved before ICANN can finalise the application 
procedure for the next hundreds or thousands of top-level domains from 
.eco to .music.

In its resolution on Friday in Mexico City, the ICANN board decided to 
request that the ICANN Generic Name Supporting Organization (GNSO) 
Intellectual Property Constituency - in consultation with ICANN staff - 
convene an “implementation recommendation team” comprised of an 
“internationally diverse group of persons with knowledge, expertise, and 
experience in the fields of trademark, consumer protection, or 
competition law, and the interplay of trademarks and the domain name 
system.” The team is to “develop and propose solutions to the 
overarching issue of trademark protection in connection with the 
introduction of new gTLDs.”

“We have reached out to the IP community saying, ‘You come back to us 
with some proposal how this should be solved,’” said ICANN Board 
Chairman Peter Dengate Thrush. An IP lawyer by profession, Dengate 
Thrush said he was confident that a proposal would be brought back to 
ICANN because of the “track record” of the IP experts. “We have gone 
through this already once in 1998/99,” he said. The debates 10 years ago 
resulted in the formation of the Uniform Domain-Name Dispute-Resolution 
Policy <http://www.icann.org/en/udrp/udrp.htm> (UDRP), built into the 
system to fight domain grabbing. Many domain-name disputes under the 
UDRP are brought to the World Intellectual Property Organization, which 
is expected to release its annual report on internet disputes next week.

The danger of name-grabbing at the first stage and the concern that 
trademark owners will be pressured to protect their brands in hundreds 
of new TLDs led to a flurry of critical comments during the comment 
period last year for the first version of the Applicant’s Guidebook to 
the new domains. Even the US government called into question the need 
for new gTLDs asking for studies on the issue of market demand and 
market impact.

ICANN recently published “preliminary” versions of studies prepared by 
Dennis Carlton, economics professor at the University of Chicago and 
highest-ranking economist in the Antitrust Division of the US Justice 
Department between 2006 and 2008. The draft texts came under heavy 
critique from participants at the ICANN meeting in Mexico.

After ICANN’s decision on the implementation recommendation team there 
are some concerns with regard to the composition of group by outside 
observers. Board member Dennis Jennings of Ireland said he was glad that 
the resolution taken included internationality as a principle for the 
group. The discussion about IP issues seemed to have been “driven by big 
business and West, or North American intellectual property interests,” 
he said, adding that “other dimensions that need to be taken into account.”

Wendy Seltzer, non-voting liaison of the At-Large Advisory Committee on 
the board said she hoped that members of other communities would be 
“consulted early in the process and would have full opportunities to 
analyse proposals that come out of this working group.”

”All interested constituencies will have the opportunity to provide 
input to the group,” wrote Kristina Rosette, an IP lawyer at Covington & 
Burling who represents the IP Constituency in the GNSO. This means the 
opportunity to provide input before drafting starts and during the early 
stages as well as the opportunity to comment on the draft, she said in a 
written statement to /Intellectual Property Watch/.

”It may also mean membership on the team,” Rosette added. “To my 
knowledge, that aspect has not been decided nor has the size of the 
team.” But she would expect that the group could be established in the 
next 10 days. Rosette also said she was confident that the IP 
Constituency could ultimately present a solution acceptable to other 

Members of other constituencies in first reactions were worried that the 
IP Constituency would start over and neglect the policy development 
process that has taken place over years on the new gTLD introduction. 
They complain that the constituency has taken part in it and now is 
given a privileged chance to push their interests.

“We need a solution,” Dengate Thrush said of the trademark issue. If the 
report is not acceptable to other constituencies in ICANN, “we will 
start our own work for a solution,” he said.

Government Involvement

The chairman of the ICANN Government Advisory Committee (GAC), Janis 
Karklins, welcomed the steps taken to ensure IP protection but 
criticised a proposal that geographic names be given the same level of 
protection rather than higher protection.

So far GAC advice on the protection of country and place names has not 
been “fully taken into account,” Karklins said, as ICANN provided 
protection for the top level but not the second level of the upcoming 
new gTLDs. The second level would be in the form of @name.othername.

Dengate Thrush reacted to this by saying that there might be a need for 
the GAC to reconsider parts of its advice, “partly because they’re 
difficult to implement and partly because they’re in conflict with other 
policy decisions.”

Dengate Thrush also confirmed that as details of the different processes 
of introducing new gTLDs and new internationalised country-code 
top-level domains (IDN ccTLDs) becoming much clearer, the possibility 
for different start times for each set of names would become more real.

Dengate Thrush asked, “Now that the possibility of divergence is 
becoming more real, what is the policy behind that?” and called for 
discussion on the question at the next ICANN meeting to be held in 
Sydney on 21-26 June.

/Monika Ermert may be reached at info at ip-watch.ch 
<mailto:info at ip-watch.ch>./

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