ICANN and Trademark Maximalism (Again)

When ICANN passed a policy to create many new top level domains, both trademark owners and free speech advocates squawked, (but for different reasons). Trademark owners were fully represented during the development of the policy and their representatives in ICANN’s GNSO actually voted for it – unlike the free speech advocates in the NCUC. But after the policy passed, during the implementation phase, they lobbied the US government and pursued other back channels in ICANN. ICANNs Board rewarded this behavior by passing a resolution authorizing the formation of an Implementation Recommendation Team (IRT). IRT is an acronym for “second bite at the apple;” it gave one special interest group, ICANN's Intellectual Property Constituency, the exclusive right to draw up a wish list of their most fervently desired policies for protecting trademarks in an expanding domain name space.

The draft IRT report was released for public comment April 24. You can find of summary of it here. Today, the last day for public comment, ICANN veteran Kathy Kleiman, a lawyer who played a role in forging a multistakeholder agreement on the UDRP ten years ago, filed comments pointing out some alarming features of the IRT’s proposal.

The IRT proposal asks ICANN to provide a new service to:

* Notify trademark owners when “their string” is being used in top and second level domains; and
* Warn domain name owners away if they happen to register “that string of characters,” in any top or second level domain (of any sort and for any purpose)

Quoting Kleiman, “In its opening criteria, the IRT set out clear goals which include that the IRT proposals must ‘not create additional legal rights” for trademark owners.’ But the IRT Proposals clearly create additional legal rights for trademark owners.” Kleiman focuses in particular on the proposal for an “IP Clearinghouse” and points out that it creates broad new rights of trademark owners. So too does the Globally Protected Marks List.

“Their string?” Kleiman argues that all members of the public have the right to use words in their normal, generic sense. This right “is not invalidated by the existence of a trademark using the same set of characters. Simply put, trademark owners do not have the right, under law, to remove from our language basic words like pony, sun, tide and cheer. Neither do they have the right of ‘first dibs’ or rights of first refusal to these ordinary words in new gTLDs.” And yet, Kleiman points out, “the IP Clearinghouse is based on the assumption that a trademark owner owns a string of characters and can, and should, be allowed to prevent others from using that string.”

Kleiman correctly asserts that these services go well beyond ICANN’s mission: “The IP Clearinghouse with associated watch services, a Globally Protected Marks List, a Standard Sunrise Registration Process and a Post-Launch Second-Level Rights Protection Mechanisms [were] never envisioned by the White Paper.”

Her comments also raised valid procedural concerns. “This proceeding has moved too quickly. The comment period was posted for 30 days, publicized for 30 days, yet only the first 12 days seemed to count. Reflecting the lack of time to prepare, comments reflect disclaimers about lack of full review and sign-off, apologies, and even revocation by Intellectual Property owners of their signatures from comments in support of the IRT proposals.”