One must really cry for trademark holder representatives in the new gTLD process. The poor trademark holder representatives, with well-paid lawyers fighting for their rights, and yet, occasionally someone stands up to them and questions whether they are right.
In another article on the World Trademark Review website they are crying into their milk and claiming nobody listens to them, ICANN in particular. After all, when you spend so much money on lobbying and lawyers, it could only be expected you get your way.
With more negotiations next week at the ICANN meeting on the Draft Applicant Guidebook, trademark holders are none too impressed. “Read between the lines in papers and letters recently published, and a systemic lack of understanding of trademark rights becomes apparent” they claim.
“The best example is the board’s proposal to enjoin rights owners to show evidence of use for every mark they hope to deposit in the clearinghouse” the World Trademark Review article says.
“After many months of back-and-forth in the ICANN community over ICANN’s proposal to include in the clearinghouse only marks that have undergone ‘substantive examination’ (ie, examination on relative grounds of refusal), ICANN’s Government Advisory Committee (GAC) has recommended: ‘All trademark registrations of national and supranational effect, regardless of whether examined on substantive or relative grounds, must be eligible to participate in the pre-launch sunrise mechanisms.'”
I guess one could feel a little bit for the trademark holders if they were not prepared to be so obstinate in the whole new gTLD process and work constructively, but if you are inclined to read the full World Trademark Review article, see:
You can never keep trademark holders down, not when they have oodles of money to pay oodles of lawyers, which is what ICANN is finding as it plans to implement new generic Top Level Domains, with the expectation being they will commence taking applications sometime this year.Following intense lobbying of ICANN’s Governmental Advisory Committee, the GAC succumbed to the pressure and have been putting pressure on ICANN to give trademark holders what they want.World Trademark Review has followed the process closely and published a report this week on the process, although it is largely sympathetic to their clientele, the trademark lobby.The article says that “thanks to the strident approach of ICANN’s Government Advisory Committee (GAC), brand owners have won what is being described as an ‘unprecedented opportunity’ to convince ICANN’s board of how to protect trademarks rights under new gTLDs.”The board has agreed to meet with the GAC in a meeting rumoured to be planned for 28 February to 1 March in Brussels. Meanwhile, the GAC has appointed one person to collect community thought on this topic: UK government representative Mark Carvell. Carvell called a meeting in London last Friday to hear industry’s suggestions for how to overcome the stalemate of rights protection. With input from Vodafone, BBC, Richemont, BSkyB, News International and Shell, the discussion kept returning to the IRT recommendations.The GAC have appointed a central person to “collect community thought”, this being UK government representative Mark Carvell. WTR notes a meeting was held “in London last Friday to hear industry’s suggestions for how to overcome the stalemate of rights protection. With input from Vodafone, BBC, Richemont, BSkyB, News International and Shell, the discussion kept returning to the IRT recommendations.””Don’t negotiate on the IRT report,” one trademark counsel told Carvell. “Maybe trademark owners could give you a real wish list to prove that the IRT is not a wish list.”The WTR article also discusses the globally protected marks list and Uniform Rapid Suspension system from the trademark holder’s perspective.But one thing is sure, large trademark holders are spending plenty of money and lobbying hard to ensure that if new gTLDs go ahead, which is close to a fait accompli, they will make life as difficult as they can for the new gTLD operators.To read this World Trademark Review report in full, see:
“A new book by Dr. Konstantinos Komaitis (Lecturer in Law at the University of Strathclyde) provides a passionate yet legalistic and well-researched overview of the legal, institutional and ethical problems caused by the clash between domain names and trademarks,” writes Milton Mueller on the Internet Governance Project blog.Mueller then says in his review that “this is really the first decent book-length treatment of what is now a decade and a half of legal and political conflict between domain name registrants and trademark holders.”One of the key points of the book according to Mueller is where Komaitis says “domain names are a form of property, and the property rights held by domain name registrants need to be recognized in law – independently of, and carefully distinguished from, the limited rights associated with trademark protection.”To read more of this review of Dr. Konstantinos Komaitis’ book by Milton Mueller, see:
The Coalition Against Domain Name Abuse (CADNA) has released a report claiming that the introduction of new generic Top Level Domains (gTLDs) as proposed by ICANN will cost brand owners worldwide over $746 million.However the study is part of the propaganda CADNA regularly releases based on the premise, as they claim, that the cost to individual brand owners will be “about $500,000 each if one conservatively estimates that the average brand owner will defensively register 3 domain names per gTLD, that the average price of domain name registrations in sunrise periods of new gTLD launches will be $500, and that brands will not necessarily participate in each gTLD launch equally.”However one needs to consider whether brand owners will really bother with defensively registering their brand names in small gTLDs. Currently very few brand owners bother with small country code Top Level Domains (ccTLDs), so why will it be any different small gTLDs? For a large number of ccTLDs brand owners ignore registering domain names, either defensively and/or to promote their products in the local community, until there is a critical mass of domain names registered.Backing up this view is a survey by Minds + Machines, who have a vested in this process admittedly as they are proposing to apply for several gTLDs when ICANN begins taking applications.In their survey of the domain registration behaviour of Fortune 100 companies, they found that they have not registered many of their trademarks in recently created gTLDs. In a sample of 1,043 brands, they found that they were registered in less than 30 per cent of the eight new open gTLDs created after 2001.The survey theorised that if historical registration data is a guide, brands are unlikely to undertake many defensive domain name registrations in the proposed new gTLDs, and furthermore are unlikely to be the victims of cybersquatting.In an earlier study by Minds + Machines, they found that the cost of enforcement of trademark rights in new gTLDs is likely to be small – on the order of $0.10 per registered trademark, per year.Additionally, ICANN is proposing to create a Trademark Clearinghouse and Uniform Rapid Suspension procedure to protect trademarks in the new gTLD programme.So yes, brand owners will often find they have additional costs in the new gTLDs. But the costs will be miniscule compared to the claims made by CADNA, but still significant.
Milton Mueller gave the ICANN board an A for effort following the fairly large number of resolutions it passed in its meeting last Friday, but an F for substance. Continue reading Milton Mueller finds ICANN's Nairobi Board resolutions "painful to read"
Milton Mueller gave the ICANN board an A for effort following the fairly large number of resolutions it passed in its meeting last Friday, but an F for substance.
Mueller gave his reasons on a number of issues including:
- “the Board [choosing] to ignore its independent review panel and refused to rectify what was officially determined to be unfair and discriminatory treatment” on the .XXX application
- issuing “a needlessly biased and poorly worded resolution that was an attempt to clarify things but probably did the opposite” on vertical integration
- “bending over backwards to accommodate trademark interests at the expense of market diversity, as most of the resolutions passed refer to various aspects of how to protect trademark owners from the horrifying prospect of letting people register names under new TLDs”
- “in response to complaints that it had set the fee bar for new gTLDs too high, the Board issued a vague instruction to its Advisory Committees and Supporting Organizations ‘develop a sustainable approach to providing support to applicants requiring assistance in applying for and operating new gTLDs.'”
To read the posting by Milton Mueller in full on the Internet Governance Project blog, see: