Trevor Little

A letter, co-signed by 21 law professors and practitioners, has slammed the “expansive protections recently demanded by trademark owners”, which they argue “are inconsistent with basic propositions of trademark law”. In response, leading commentators have hit back at the “misleading and inaccurate” arguments made in the letter.

On Friday, as the ICANN community descended on Copenhagen for this week’s meeting, the Electronic Frontier Foundation posted a letter sent to the co-chairs of the ICANN GNSO PDP Working Group on the Rights Protection Mechanisms (RPMs) review on its website. It highlights a “troubling tendency for rights protection mechanisms at ICANN to disregard the delicate balance that domestic trademark law strikes between the business interests of trademark owners and the free expression rights of their competitors and the general public”. Amongst the concerns listed are the ability, through the Trademark Clearinghouse, to have priority access to domains through the sunrise process, which the group argues go against both the class system and territorial nature of trademark law.

It adds that two features of the TMCH disrupt the balance between the rights of trademark holders and the rights of non-trademark registrants. The first is the inclusion of design marks, of which “many… include words that would not be protectable absent the design. The inclusion of these words in the TMCH effectively extends the trademark protection of these words beyond what trademark law would permit”. The second relates to the secrecy of the TMCH database, the letter arguing: “Trademark registries have always been open to public searches, limited only by physical access. In the digital age, the concealment of these records is a momentous and unjustifiable retreat from transparency.” The authors therefore urge ICANN to re-evaluate the premises of many of its existing rights protection mechanisms “to ensure that they do not exceed the purposeful boundaries of trademark rights”.

A signatory to the letter, the Electronic Frontier Foundation went further on its blog, characterising the ability to gain control of hundreds of domains that resemble your business name a “a trademark lawyer's wet dream”, stating that ICANN should now take the opportunity to roll back the TMCH. Jeremy Malcolm, EFF senior global policy analyst, also raised concern at voluntary offerings such as Donuts’ DPML programme, stating that there is no “convincing reason why the domain industry should be providing them [trademark owners] with such privileges.”

Responding to the letter, Brian J Winterfeldt, co-head of the global brand management and internet practice at Mayer Brown, laments its “fundamental mischaracterisation of the current ICANN RPMs”, adding: “The letter inaccurately depicts the RPMs as ‘expansive protections recently demanded by trademark owners” which are “inconsistent with basic propositions of trademark law’. First, the trademark owner community has not recently demanded any protections. The current RPMs were implemented in 2012 as part of the new gTLD program and were the result of a years-long community-wide process that included brand owners and many other ICANN stakeholders. Second, the RPMs were developed to incorporate existing trademark legal norms. The RPMs are a limited set of remedies and do not create any new standalone rights for trademark owners. In fact, the RPMs have been quite costly for trademark owners to use and the remedies have not adequately prevented ongoing cybersquatting, fraud and abuse in the new gTLDs. Regardless, the RPMs trademark owners rely upon, including the TMCH and the sunrise period are absolutely essential to protect trademark owners' key marks before the harm occurs.”

On the issue of design marks, while he expressed sympathy to the argument “that design marks where the underlying textual element would not be protectable absent the design elements should be ineligible for entry into the TMCH”, he argues: “The TMCH should also not be placed into the position of making substantive examination-style evaluations of nationally/regionally registered trademarks, whose rules vary across jurisdictions.”

Winterfeldt additionally stresses that – as “a specific repository of existing trademark rights that reflects (arguably trade secret) strategic decisions by brand owners as to which marks to include” – there is “no compelling rationale” for making the Clearinghouse database open and searchable. He concludes: “Opening the database would provide a roadmap for bad actors by revealing gaps in TMCH recorded marks, making it a one stop shop for cybersquatting, fraud and abuse. Keep in mind that any third party who receives a Trademark Claims notice may challenge the underlying TMCH record through existing challenge mechanisms at ICANN. In addition, you could attack the supporting registration in the relevant jurisdiction.”

Reflecting on the ICANN multi-stakeholder process that gave birth to the RPMs, David Taylor, partner at Hogan Lovells, recalls: “They were a genuine attempt to put in place mechanisms that would help to deter cybersquatting and abuse in the domain name system, protecting both brands and consumers. The goal was to try obtain a balance and an appropriate protection of consumers and trademark holders on the one hand without being overreaching on the other. These RPMs, including the TMCH, are the result of many months and years of discussion and a bottom up policy within ICANN.”

Considering the arguments made by in this latest communication, he added: “This letter falls firmly on one side of the old argument already heavily debated over the last 8 years within the ICANN community, and is also very much US centric. For instance, the claim that the TMCH somehow gives trademark owners special rights to prevent the registration of domain names that contain their trademarks is a mischaracterisation of what essentially is a database.  The sunrise period mentioned and priority access (at a cost) that this provides to trademark owners is itself now nearly as old as domain names themselves. It is relied on by domain name registries across the globe as a means of allocating domain names and minimising bad faith registrations. Where there are multiple applications by different trademark holders each registry has its process for dealing with these and allocating them.  The TMCH has not changed this, it is simply there for administrative ease and costs.  The early warning mentioned importantly does not allow a trademark holder to prevent any registration – all it provides is a notification of a registration, as do the many watching services available.” 

Gregory Shatan, partner at McCarter & English and president of ICANN’s Intellectual Property Constituency (IPC), similarly expressed concern that the letter “contains an unfortunate number of points which are misleading and inaccurate, particularly in its characterisations of the ICANN RPMs”. He told us that the IPC will develop a response to the letter, but noted that this will likely come after this week’s ICANN meeting as its members “are deeply engaged in this week’s policy discussions, including the RPM review, and we need to stay focused on the work here”.

However, he stated: “We do need to note that (as the ICANN community knows) the RPMs are the result of ICANN consensus policy and multi-stakeholder processes, and represent a compromise between multiple stakeholder groups, including civil society and non-commercial users. We also note that a number of the signatories to the letter do not currently participate in discussions of these topics at ICANN, and we would certainly welcome their involvement in the RPM Review Working Group as we engage in the critical discussion and assessment of the RPMs.”

Taylor echoes this call, concluding: “I do agree that any expansion of rights protection mechanisms for trademark owners needs to come with appropriate safeguards of free speech and the like, however, the letter mischaracterises supposed recent demands by trademark owners. What we currently have is an ICANN RPM Review Working Group looking at the RPMs currently in place. As to the RPMs themselves, given the bottom up process they inevitably are a compromise between multiple stakeholder groups within ICANN.  It is quite clear to me that they are not as aggressive as many brand owners would like them to be. Today, with some 1,200 new gTLDs delegated we have the opportunity to assess how well they are fit for purpose. That is one of the jobs of the RPM Review Working Group and a part of the critical discussion this working group is currently having which is both timely and necessary. I would encourage the authors to participate in the RPM Review Working Group.”

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