ICANN’s New gTLD Draft Applicant Guidebook Gives Added Protection to Trademark Holders

ICANN released the fourth version of their Draft Applicant Guidebook for potential new generic Top Level Domain (gTLD) applicants last week with several issues of interest to brand owners and trademark holders. The latest draft of the guidebook has changed in only a few areas from version three and will be a topic of discussion at the upcoming ICANN meeting in Brussels, commencing on 21 June.To take into account the views of trademark holders, ICANN has proposed a number of mechanisms to minimise their potential costs. These include a Uniform Rapid Suspension System, a Trademark Clearinghouse and the Post-Delegation Dispute Resolution Proposal.According to an analysis by Minds + Machines, a consultancy that assists applicants in the application process for new gTLDs, ICANN is expecting around 500 applications for new gTLDs, although there could be a significant number of duplicate or conflicting applications.”This means that they’re intending to pass approximately 90% of the applications in other words, ICANN’s intent is not to fail applications by finding trivial faults, but rather to simply make sure that they’re operationally and financially sound,” writes Antony Van Couvering from Minds + Machines.The latest draft has taken into account community consultation and includes some changes to the above and more. Some of the changes are:

  • incorporation of trademark protections, including improvements to the Uniform Rapid Suspension (URS), the Trademark Clearinghouse (TM Clearinghouse), and the Post-Delegation Dispute Resolution Proposal (PDDRP)
  • changes to rules for geographic TLDs, including a prohibition on country names as gTLDs and a requirement for the permission of national governments for applications for capital city names, although where the city name is also a generic word, for example, there may be exceptions
  • a new gTLD Registry transition process model, including provisions for emergency transition in the case of prolonged Registry technical outages
  • a model for providing centralised zone file access (ZFA) to aid in combating malicious conduct
  • a revised base Registry agreement, the contract future registries must sign with ICANN, including new features such as:
  • o Registry-Registrar cross-ownership language -proposed position pending the Generic Names Supporting Organization (GNSO) policy-development work
  • o Emergency Registry transition provision -to be used for protection of registrants in the event of prolonged Registry technical outage
  • o special new agreement provisions for governmental and inter-governmental organization (IGO) applicants -based on negotiations with Universal Postal Union (UPU) for .post (subject to modification for different circumstances of other similar organizations)
  • o new “hybrid” process for future amendments -based on consultations with Registries and others
  • o new provisions for centralised registry zone file access (ZFA).

The trademark protections offered in the guidebook give trademark holders strong protection. There are three main proposals to assist in trademark protection, these being:

  • a Trademark Clearinghouse that requires registries to recognise trademarks that are nationally or multi-nationally registered.
  • a mandatory Uniform Rapid Suspension to enable prompt action on disputes involving trademarks
  • upon the recommendation of the Implementation Recommendation Team and the World Intellectual Property Organization (WIPO) that one of the rights protection mechanisms for trademark holders should be a trademark post-delegation dispute resolution procedure (Trademark PDDRP) to afford trademark holders the right to proceed against registry operators who have acted in bad faith, with the intent to profit from the systemic registration of infringing domain names (or systemic cybersquatting) or who have otherwise set out to use the gTLD for an improper purpose.

Some other notable changes picked up by Minds + Machines were:

  • an expanded role for public comment that could allow for a wide range of objections to proposed gTLDs that could come from powerful interests
  • an expanded background check on applicants that takes into account issues such as bribery, corruption and terrorism as well as intellectual property violations
  • new and/or innovative uses of gTLDs such as .TEL will require special permission from ICANN and that the use will not harm the stability of the DNS

For more information on ICANN’s new gTLD programme, see icann.org/en/topics/new-gtlds/explanatory-memoranda-4-en.htm.Minds + Machines have published a number of articles on new gTLDs, not just on the draft applicant guidebook, and these are available from their website at www.mindsandmachines.com.This article was originally written and prepared for eBrand Services, specialists in managing domain name portfolios.