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.”

2 comments

  1. Anonymous

    The new DNS software automates the IANA task of selecting the Top Level Domains.
    There are now 4096 slots for Top Level Domains.
    Everything is automatically built from the .COM namespace. Humans (and lawyers) are not required to meddle with the free marketplace.
    The new .COM servers are FREE. The old legacy .COM servers will eventually be turned off.
    Verisign will not be paid and therefore ICANN will
    not be paid. Neither are needed to operate the .NET.
    The names from .ORG, .NET, .BIZ, and the 2-letter
    TLD spaces can all be migrated for FREE to the new
    .COM servers. The ISOC will no longer be funded
    by the .ORG cash.cow.
    Various companies and domain sharks will be
    assisting existing domain name owners in the move
    to the new (FREE) DNS. Their services may not be
    FREE.
    Has ICANN ever done anything for FREE ?

  2. Anonymous

    The ESA's Michael Gallagher Slated to Give “State-of-the-Industry” Address at E3 Expo 2009
    http://www.theesa.com/about/leadership.asp
    Michael (Mike) D. Gallagher
    President and CEO
    Michael (Mike) D. Gallagher
    High-resolution photo
    Mike Gallagher has a deep background in technology policy. Mr. Gallagher was the Department of Commerce's Assistant Secretary for Communications & Information, serving as chief telecommunications and Internet policy advisor to the George W. Bush Administration. During his over four-year tenure at the Department of Commerce, he led successful efforts to pave the way for a number of new technologies and services, such as ultrawideband, broadband over powerlines, advanced wireless services, and millimeter wavelength networks. In addition, Mr. Gallagher developed and successfully advocated the U.S. Government's policies on international Internet governance.