“Serious concern” over new ICANN policy group proposals
By bassist - Last updated: Thursday, January 14, 2010 - Save & Share - Leave a Comment
Brand owners drafting a response to the recommended “mandatory” adoption of trademark protection proposals for the new generic top level domains (gTLDs) have broadly welcomed the latest development but “serious concerns” remain.
The report of the Special Trademarks Issues (STI) team, a working group created by ICANN’s Generic Names Supporting Organization (GNSO), details the consensus reached among its members that “creation of a Uniform Rapid Suspension (URS) procedure would be a beneficial rights protection mechanism for inclusion in the new gTLD programme”.
Recommending, as predicted, that the URS should be a “requirement” for all new gTLDs, the STI report adds: “The URS could provide trademark holders with a cost effective, expedited process in instances of clear-cut instances of trademark abuse.”
The report has been open for comments since December 17 but has to date received no submissions. Nevertheless, brand owners remain publicly concerned by the plans. “ICANN has managed to reduce the Implementation Recommendation Team (IRT) report to something that doesn’t provide any real protection for trademark owners,” Mette Andersen, corporate counsel at Lego Group and member of the IRT, told WTR (for background on the IRT, see “Inside the IRT: how brand owners are reshaping the Internet”).
The GNSO’s Intellectual Property Constituency (IPC) is planning to add its voice to the debate. “The IPC feels like the STI report was a positive outcome, but that there are some serious concerns,” said J Scott Evans, president of the IPC and senior director – legal at Yahoo!. ”We have selected a drafting team that will be putting together proposed comments for review and approval by the IPC membership.”
Brand owners have previously voiced strong criticism of ICANN’s plans (see “Brand owners lash out in latest gTLD comment round”), notably over it’s decision to reformulate the IRT’s recommendations and forward them for further discussion to the GNSO. “The whole process confirms my impression that the IRT was just to keep trademark owners quiet,” Andersen commented. “It seems quite obvious that ICANN had no intention of implementing rights protection measures of any real value to trademark owners.”
Nevertheless, as Evans indicates, the net outcome of the STI process has been positive for brand owners. In addition to recommending a mandatory URS, the group also recognized that the proposed Trademark Clearinghouse would be “a convenient location to store registered trademark information in a centralized location on behalf of trademark holders, and could create efficiencies for trademark owners, as well as registries which will benefit from having one centralized database from which to interact to obtain the necessary trademark information to support its pre-launch rights protections mechanisms”.
Another former member of the IRT, Ellen Shankman of Ellen B Shankman & Associates, commented that ICANN is “finally getting round to recognizing the repercussions” of the gTLD roll out. She explained: “The STI report shows that a very diverse group has reached a very clear understanding that both the Trademark Clearinghouse and the URS are important, mandatory functions.”
Meanwhile, ICANN continues to plan the domain space expansion, tentatively scheduled for this year, while work continues on resolving the trademark question (one of the four overarching issues identified by ICANN as problems that need dissolving before the programme goes live). Shankman opined: “The gTLD programme has been mismanaged: the board seems to believe that somehow the roll out and the resolution of the four issues can happen in parallel.”
