EURid is hosting a webinar open to all organised in collaboration with EUIPO, the European Union Intellectual Property office, on How to make the most of my business? Domain names and trademarks as business builders on 13 October.
Back in January ICA joined with four other trade association in cosigning a letter communicating our joint concerns regarding a âtrademark packageâ being considered by the Council of the European Union. Adoption of the language under consideration could have led to adverse judicial actions being brought against domain registrants of all types by aggressive trademark owners. In particular, the signatories objected to the wording of the Proposal that would have resulted in the addition of âdomain namesâ to the enumerated prohibited uses, for which the proprietor of a registered trade mark has an exclusive right to impose on third parties.
All the signing groups believed that this would have been redundant of Community Trade Mark rights as they already apply to domain names. The also shared concerns that this addition would have generated confusion among judges inexperienced in Internet technology, and predisposed EU member courts to find infringement in cases of legitimate uses of domain names.
We are delighted to report that Jakob Kucharczyk, Director and General Manager of CCIA Europe, has informed us that the letter had its intended effect. Â Domain names have been dropped from the scope of substantive trademark protections and will not be included in the final package.
Mr. Kucharcyzkâs email to those who had cosigned the letter of concern concluded with the declaration, âThis is a huge win for us and I would like to thank you one more time for your support!â We at ICA in turn thank CCIA Europe for bringing this issue to our attention and are happy to have contributed to halting unnecessary new law that could have created substantial problems for domain registrants residing in the EU.
This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
The Rules for the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP) and Registry Restriction Dispute Resolution Procedure (RRDRP) are now available for download.
Download the Rules:
The Trademark PDDRP and RRDRP are two of several new Rights Protection Mechanisms (RPMs) available in the New gTLD Program. These procedures complement both existing and other new RPMs and have been developed to provide those harmed by a new gTLD Registry Operator’s conduct an avenue to have such conduct independently reviewed and evaluated. The Trademark PDDRP addresses a Registry Operator’s complicity in trademark infringement on the first or second level of a New gTLD. The RRDRP is intended to address circumstances in which a community-based New gTLD Registry Operator deviates from the registration restrictions outlined in its Registry Agreement.
The Trademark PDDRP [PDF, 181 KB] and the RRDRP [PDF, 257 KB] define their respective claims processes, and the Rules will help the service providers implement the Trademark PDDRP and the RRDRP in a consistent manner.
In addition to the Rules published by ICANN, each service provider will produce Supplemental Rules to help standardize conduct for that provider’s interactions with complainants and respondents. Supplemental rules must not be inconsistent with the Procedure or the Rules.
This ICANN announcement was sourced from:
Donuts have launched a service to protect trademarks in new gTLDs. The service is being touted as a cost-effective means of protecting trademarks âat a fraction of the cost of âdefensiveâ domain name registrations.â
The service is called Domains Protected Marks List (DPML) and works by “‘blocking’ trademark-related terms from registration at the second levelâ in all Donuts operated TLDs âfor an initial subscription of a minimum five and maximum ten-year term. Subscriptions can be renewed thereafter for one to ten-year terms.â
Donuts applied for 307 gTLDs, although the final number it will operate is not yet certain, but Domain Incite reports it has âcurrently has 28 registry agreements with ICANN and 272 applications remaining in various stages of evaluation.â And it has been reported the service will cost $600 per year for each trademark string across all Donuts-operated gTLDs. Meaning that if all applications go through, it would cost $2 per trademark string.
For more information, see the news release below:
Donuts Launches Domains Protected Marks List [news release]
Donuts Inc., a registry for new generic top-level domain names (gTLDs), such as .BUSINESS, .EMAIL and .SERVICES, has launched the Domains Protected Marks List (DPML), a groundbreaking mechanism allowing trademark holders to protect terms in all Donuts-managed gTLDs at a fraction of the cost of “defensive” domain name registrations.
The service is now live and available for subscription through participating domain name registrars accredited by ICANN.
DPML works by “blocking” trademark-related terms from registration at the second level (the characters before the dot).Â A DPML term is blocked from registration in all Donuts TLDs for an initial subscription of a minimum five and maximum ten-year term. Subscriptions can be renewed thereafter for one to ten-year terms.
“For the more than eight years spent developing the new gTLD program, trademark rights protection has been critical to advancement of gTLD expansion,” said Donuts COO and co-founder Richard Tindal.Â “Marks holders are concerned about potential abuse of their brand names. DPML and the other mechanisms we’ve elected to provide ensure brands are even more extensively protected now than they ever have been, and at low cost.”
DPML Features and Requirements
A trademark holder must first register a mark with the Trademark Clearinghouse (TMCH), ICANN’s centralized trademark database.Â The mark must be registered according to the “use” standard.
Brand owners may then submit an exact match of a mark, or a term that contains an exact match, to DPML.Â Once verified with a validated TMCH entry, that term can be blocked in Donuts gTLDs.
A domain name blocked by DPML is not functional, meaning it may not be used for a website URL, e-mail address or other domain name-related functions.
Retail pricing for DPML subscriptions is at the discretion of the registrar.
Certain restrictions apply to premium names, three-character names, and other various applications of the service.
Brand specialists welcome DPML Domain name registrars that largely serve brand and trademark-focused clients have applauded the Donuts system as a welcome advancement.
“Companies have legitimate concerns about protecting their brands in the new gTLD environment and have been asking for this type of protection,” said Elisa Cooper, Director of Product Marketing at MarkMonitor, part of Thomson Reuters.Â “The Donuts DPML service provides a cost-effective alternative to defensively registering domains and we feel this is an important option for our clients.”
DPML is keenly anticipated by European registrars as well.Â “This is a service of real value to our clients,” said Markus Eggensperger, a founder of united-domains AG of Germany.Â “Donuts has carefully taken into account brand protection needs and provided a thoughtful and effective service to brand owners.”
Donuts gTLD schedule According to ICANN’s schedule for evaluation and delegation of new gTLDs, Donuts expects its first gTLDs to become available later this year.Â Because DPML subscriptions don’t block domain registrations made prior to that subscription, brand owners should consider subscribing prior to the launch of the first Donuts gTLD.
About Donuts Inc. Donuts is a domain name registry that is widening competition and choice in Internet identities through hundreds of new top-level domain name choices, securely operated in multiple languages and character sets.Â Donuts is headquartered in Bellevue, Wash., with offices in Southern California, Washington, D.C. and London.Â For more information, please visit www.donuts.co.
On April 19, 2013 ICANNâs Non-Commercial Stakeholders Group (NCSG) filed a formal Request for Reconsideration with ICANNâs Board Governance Committee to review a unilateral staff decision to expand the scope of the Trademark Clearinghouse (TMC) claims service for new gTLDs. That decision would allow trademark owners to include up to 50 additional typographical variations of each accepted trademark in the TMC database (letter at www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf).
The claims service serves two purposes â conferring the ability for trademark owners to participate in an advance sunrise registration period at each new gTLD, and generating automated warning letters to potential registrants that a domain they are seeking to generate was a registered trademark â or, under the adopted 50-plus rule, had been the subject of a prior UDRP or judicial enforcement action. That latter aspect is particularly worrisome because, as NCSG Chair Robin Gross explained in a related article:
Under staff’s plan, large trademark holders that register in the clearinghouse will be provided thousands of derivations of their trademarks since each separate country’s registration of the same trademark provides the brand owner with an additional 50 entries in the TMCH.(Emphasis added) www.circleid.com/posts/20130501_icann_board_asked_to_review_decision_to_expand_trademark_rights/
That means that the potential registrant of an intended website at one of the 1400 new gTLDs, seeking to use a domain name having no trademark protection and with no intent to infringe, might nonetheless receive a warning of potential infringement â a warning that might later be cited as evidence of bad faith registration by an aggressive trademark owner in a UDRP or URS filing. This would constitute an unjustified expansion of trademark rights â which ICANN stated as the basis for its prior position that it lacked the power to adopt such a policy â and would undoubtedly halt many perfectly valid domain registrations from ever taking place at new gTLDs. Itâs not even clear whether a potential registrant receiving the warning would be told if the intended domain was an actual trademark or just a typo.
Ms. Grossâ article cites a March 22nd ICA posting in which we recounted the history of this issue â including repeated ICANN statements that such expansion was beyond its powers and raised policy matters that must be addressed by the GNSO Council rather than staff â and we observed âthat it is difficult to justify adoption of a mechanism that flies in the face of ICANNâs own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speechâ¦.Itâs all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.â (internetcommerce.org/ICANN_Amnesia)
As for what happens now that the request for reconsideration has been filed, Ms. Grossâ article explains:
ICANN’s Board Governance Committee has thirty days in which to make to a recommendation to ICANN’s Board of Directors regarding the NCSG’s Request for Reconsideration or report to the Board on why no final recommendation is available and provide a timeframe for making a final recommendation on the matter. ICANN’s entire Board should consider the recommendation of the Board Governance Committee at its next regularly-scheduled Board meetingâ¦NCSG requests that the Board reinstate the community-developed policy of giving trademark holders rights to include exact matches of their trademark only in the TMCH, which was the policy stated in ICANN’s Applicant Guidebook when ICANN accepted applications for new domains.
ICA commends the NCSG for filing this important request that ICANN observe proper decision-making procedures. We fervently hope that the Board Governance Committee will take the request seriously and recommend that the full Board reverse this unwarranted staff decision. On both procedural and substantive grounds, it is clearly the correct call to return this matter to the full GNSO Council and let it perform its policymaking role. This is a decision for stakeholders, not staff.
ICANNâs institutional memory seems to be slipping, and that concerns us.
On March 20th, ICANN announced that trademark owners would not only be able to register their marks meeting certain validation criteria in the Trademark Clearinghouse (TMC) but also up to fifty variations of each mark that had been found to be the subject of abusive registrations in a UDRP arbitration or court decision (see newgtlds.icann.org/en/about/trademark-clearinghouse/strawman-solution-memo-20mar13-en.pdf). This will change the nature of the TMC from a repository of high-quality trademarks to something quite different.
Regardless of how one feels about the substance of the decision (and ICA was on record as against this expansion â see internetcommerce.org/Strawman_Non-Solution) the procedure by which it was reached flies in the face of ICANNâs own statements as to whether it had the authority to implement such an expansion and how it would deal with new gTLD issues identified as policy matters by the GNSO Council.
On September 19, 2012 â just six months prior to the âStrawman Solutionâ decision reached this week — ICANN CEO Fade Chehade dispatched a letter that informed senior members of the US Congress that this very expansion of the TMC database would put ICANN in the position of creating IP rights rather than protecting them:
âIt is important to note that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or creator of new rights. Extending the protections offered through the Trademark Clearinghouse to any form of name would potentially expand rights beyond those granted under trademark law and put the Clearinghouse in the role of making determination as to the scope of particular rights. The principle that rights protections âshould protect the existing rights of trademark owners, but neither expand those rights nor create additional rights by trademark lawâ was key to work of the Implementation Recommendation Teamâ¦â (Emphasis added)
Likewise, ICANNâs own Summary of the Strawman Solution, issued on November 30, 2012 when it solicited public comment on all the proposals it encompassed, contained this highly relevant statement:
âThe inclusion of strings previously found to be abusively registered in the Clearinghouse for purposes of Trademark Claims can be considered a policy matter. This proposal provides a path for associating a limited number of additional domain names with a trademark record, on the basis of a decision rendered under the UDRP or a court proceeding. Given the previous intensive discussions on the scope of protections associated with a Clearinghouse record, involving the IRT/STI, we believe this needs guidance from the GNSO Council.â (Emphasis added)
Well, what guidance did ICANN receive from the GNSO Council? OnÂ Â February 29, 2013 its Chair dispatched a letter to CEO Chehade providing the policy guidance that he had requested of it (see gnso.icann.org/bitcache/d8eaf7ce8d121b69d340d1d14223520fd7d478b3?vid=46277&disposition=attachment&op=download). And this is what the GNSO Councilâs letter stated in regard to the proposed expansion of the TMC database:
On addition of names to TMCH previously subject to UDRP or legal proceeding
The majority of the Council believes this suggestion deserves further examination, not only to protect the interests of rights holders, but also to ensure latitude for free speech through lawful and non-abusive registrations.Â Councillors respectfully observe that the existence of a domain name in the root system is not necessarily evidence of abuse, and that a subsequent registrant may have legitimate and non-infringing use in mind for a domain name corresponding exactly to a term that was the subject of previous action.Â
Accordingly, the majority of the council finds that this proposal is best addressed as a policy matter, where the interests of all stakeholders can be considered.Â (Emphasis added)
Back on January 31st of this year, when ICANN solicited feedback on the Staff Paper âPolicy vs. Implementation â Draft Framework for Discussionâ, what did that framework say in regard to matters identified as falling into the policy category? It proposed that when policy guidance was sought from a relevant supporting organization, like the GNSO, and when that guidance identified an issue as constituting policy, it should be subsequently addressed through a Policy Development Process (PDP) or a Policy Guidance Working Group (PGWG). But of course neither step was taken following receipt of the GNSOâs letter just three weeks ago. Instead, ICANN made a unilateral decision to ignore the GNSOâs recommendation and adopt the proposal absent any further policy development.
Instead, here is how the March 20th announcement describes the decision to expand the TMC database:
Trademark Claims Protection for Previously Abused Names
The fourth element of the Strawman model was a proposal that where there are domain labels that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding), a limited number (up to 50) of these could be added to a Clearinghouse record. These names would be mapped to an existing record where the trademark has already been verified by the Clearinghouse.
This element of the proposal was referred to the GNSO specifically, as the scope of protection derived from inclusion in the Trademark Clearinghouse was discussed previously. The GNSO advised that this should be a policy discussion rather than an implementation change. The GNSO Council communication also made reference to the stated principle that the Trademark Clearinghouse is intended to be a repository for existing legal rights, and not an adjudicator of such rights or a creator of new rights.
Having reviewed and balanced all feedback, this proposal appears to be a reasonable add-on to an existing service, rather than a proposed new service. Given that domain names would only be accepted for association with an existing Clearinghouse record, and only on the basis of a determination made under the UDRP or national laws, the proposal would not require any adjudication by the Clearinghouse. Additionally, the provision of notifications concerning associated domain names would not provide sunrise or other priority registrations, nor have a blocking effect on registration of these names by any party.
It is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse. Given that the proposal relies on determinations that have already been made independently through established processes, and that the scope of protection is bounded by this, concerns about undue expansion of rights do not seem necessary.
Based on this analysis, ICANN intends to proceed with implementing this aspect of the proposal.
As one can see, there is no reference to ICANNâs own recent earlier statements that this expansion would indeed create new rights and that it was a policy matter rather than an âadd-onâ to an âexisting serviceâ. There is also no explanation of why ICANN brushed aside the GNSOâs feedback that this was a policy matter that required further input from all stakeholders and substituted its own analysis for that of the community represented by the Council. And there is also no explanation of who made this decision, although clearly it was the work of senior staff and officers. As for the statement — âIt is difficult to justify omission of a readily available mechanism which would strengthen the trademark protection available through the Clearinghouse.â — if thatâs the decision-making criteria, why stop at 50 additional typos, why not permit inclusion of hundreds or thousands of typos (as no doubt trademark interests will soon advocate) and turn the TMC into a system that issues a torrent of warnings to new gTLD registrants who may lack the slightest scintilla of infringing intent, much less actual post-registration infringing use?
Our response would be that it is difficult to justify adoption of a mechanism that flies in the face of ICANNâs own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech.
On the same day that the announcement on adoption of the Strawman Solution was made, ICANN released a video in which CEO Chehade stated in regard to the TMC expansion that âwe came to the conclusion that itâs an implementation expansionâ(see http://blog.icann.org/2013/03/new-gtld-milestones-and-deadlines/). Now we are wondering which âweâ he was referring to. It certainly was not the âweâ embodied in the GNSO Council, and itâs certainly not the âweâ comprised of the all the stakeholders who would have had a chance to have their interests and views considered if the GNSOâs recommendation had been followed. Itâs all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.
Itâs also worthwhile to debate the difference between policy and implementation, but that doesnât mean much when settled policies are suddenly categorized as âservicesâ and major alterations as mere âadd-onsâ. And thereâs little point in the community relying on ICANN statements that appear to have a shorter shelf life than many grocery items.
We all understand that policy needs to evolve over time, but public declarations made just six months ago canât be overridden as if they never existed. Not if ICANNâs own credibility is to be preserved, and not if stakeholders are to continue to engage in a multi-stakeholder process. Many may decide itâs not worth the effort after ICANN actions indicate that community input can be ignored and that its own positions and procedures can be cast aside without warning or adequate explanation.
This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
The GNSO Council has initiated a Policy Developmenty Process (PDP) on the protection of names and acronyms of certain international organizations in the top and second levels of all gTLDs including, International Government Organizations and Non-Governmental Organizations such as the Red Cross/Red Crescent (RCRC) and the International Olympic Committee (IOC).
The GNSO Council initiated a PDP at its public meeting in Toronto to evaluate the need for, and to develop any policy recommendations to provide additional special protections at the top and second level in all gTLDs for the names and acronyms of certain international organizations. These organizations are International Government Organizations (IGOs) and International Non-Government Organizations (INGOs).
This PDP specifically includes the International Committee of the Red Cross, the International Federation of Red Cross and Red Crescent Societies and the American Red Cross (collectively, the “RCRC”) and the International Olympic Committee (“IOC”). Currently, there are no permanent special protections available for these international organization names beyond the general Rights Protection Mechanisms established for existing and new gTLDs. The PDP will be considering possible permanent protections in all gTLDs, including at the second level of the first round of new gTLDs, for the IOC and RC names, as well as additional special protections for the names of IGOs and other INGOs that are protected by international treaties and national laws in multiple jurisdictions.
A PDP Working Group will be formed after the GNSO Council adopts the PDP WG Charter. After considering specific issues as outlined in its charter and the Final Issue Report, the Working Group is expected to make recommendations to the GNSO Council for any specific necessary additional special protections for the names of certain international organizations. The Working Group is expected to publish its Initial Report for public comment in early 2013.
- GNSO Resolution on the Initiation of the PDP
- Final GNSO Issue Report on the Protection of International Organization Names in New gTLDs [PDF, 675 KB]
This ICANN announcement was sourced from:
Intellectual Property & Science business adds powerful online brand protection solutions to its trademark suite
[news release] The Intellectual Property (IP) & Science business of Thomson Reuters, the worldâs leading source of intelligent information for businesses and professionals, has officially completed the acquisition of MarkMonitor following regulatory clearance in the United States.
MarkMonitor, the market leader in innovative online brand protection technology, strengthens the broad portfolio of intellectual property solutions from Thomson Reuters, resulting in a powerful suite of comprehensive brand protection offerings to assist customers in securing their revenue and reputation. Headquartered in San Francisco and with offices in five countries, MarkMonitor safeguards more than half of the Fortune 100 brands.
âThe addition of MarkMonitor to our Intellectual Property & Science portfolio marks a transformational shift for our business,â said Chris Kibarian, president, IP & Science, Thomson Reuters. âTogether, MarkMonitor and Thomson Reuters will provide customers with the worldâs only end-to-end solution for online brand protection. We will continue to develop market leading innovations, helping clients drive brand revenue and protect their intangible assets.â
âBrand owners encounter a myriad of challenges in todayâs online environment, from digital piracy, to counterfeiting through social media, to planning for the launch of more than 1,000 new gTLDs,â said David Brown, president, IP Solutions, Thomson Reuters. âMarkMonitor and Thomson Reuters will continue to invest in advanced technologies that enable customers to manage and scope their online brand risk, keeping one step ahead of brandjackers.â
Flagship offerings of MarkMonitor include MarkMonitor Brand Protectionâ¢, for safeguarding brand equity, revenue and reputation from paid search scams, unauthorized channels, counterfeit sales, false association, impersonation, cybersquatting and other threats; MarkMonitor AntiPiracyâ¢, for monitoring, detecting and responding to piracy and related promotional activities; and Domain Management, for proactively seizing domain name opportunities and preventing others from undermining a companyâs brand and revenue.
âBrands lost billions of dollars to online abuse last year, as brand saboteurs hijacked search engine marketing, infiltrated social media, stole web traffic and peddled fake goods,â said Irfan Salim, president, MarkMonitor. âMarkMonitor and Thomson Reuters together form the brand protection market leader, providing customers with efficient and effective brand protection solutions that secure their revenue and reputations.â
As a global leader in online brand protection, MarkMonitor uses a SaaS delivery model to provide advanced technology and expertise that protects the revenues and reputations of the world’s leading brands. In the digital world, brands face new risks due to the web’s anonymity, global reach and shifting consumption patterns for digital content, goods and services. Customers choose MarkMonitor for its unique combination of industry-leading expertise, advanced technology and extensive industry relationships to preserve their marketing investments, revenues and customer trust. Learn more at www.markmonitor.com.
Thomson Reuters is the world’s leading source of intelligent information for businesses and professionals. We combine industry expertise with innovative technology to deliver critical information to leading decision makers in the financial and risk, legal, tax and accounting, intellectual property and science and media markets, powered by the world’s most trusted news organization. With headquarters in New York and major operations in London and Eagan, Minnesota, Thomson Reuters employs approximately 60,000 people and operates in over 100 countries. For more information, go to www.thomsonreuters.com.
This Thomson Reuters news release was sourced from:
Abstract: Reverse Domain Name Hijacking is a unique concept under the Uniform Dispute Resolution Policy. Its main purpose is to protect domain name registrants against unjustified claims of overreaching trademark rights by allowing domain name registrants, in some limited circumstances to retort against trademark owners.
To read this paper by by Zinatul A. Zainol, originally published in the European Law Journal, in full, see:
“In an in-house interview carried out on the last day of its recent conference in Cartagena, ICANN’s chairman and CEO have answered questions over the Board’s decisions on the new gTLD program and the application for a dot-xxx Internet extension,” wites Kieren McCarthy on the Global Internet Business Coalition blog.”Unusually for an in-house video, the interviewer (ICANN’s media director) asks direct questions and so elicits some useful, unprepared responses. You can view the full video in the top-right of this webpage.”Issues covered in the interview, include the new gTLD process, trademark issues, US government anger with ICANN and ICANN and its relationship with governments.The article by Kieren McCarthy is available from gibc.biz/2010/12/icann-ceo-and-chairman-answer-new-gtld-and-dot-xxx-questions.