By Trevor Little
July 19 2012
ICANN has temporarily taken down its new gTLD customer service portal after identifying “potential vulnerabilities”, although it stresses that there “have been no known compromises to the data, attacks or other actions by third parties”. The news comes at a time when trademark counsel are being urged to get more engaged in the gTLD process.
WTR has reported extensively about previous issues with ICANN’s online application system, which led to a delay to the announcement of applications. This latest glitch – spotted by Domain Incite’s Kevin Murphy - hit its customer service portal, which it is currently creating patches for. ICANN states: “In the meantime, given that use of the customer service system was recently expanded, and now includes confidential applicant information, the decision was taken to move the system behind Citrix. This will provide for additional security for applicant information. We are now testing the installation. This should be completed in the next few days.”
The announcement comes with the close of the public comment period weeks away, and MARQUES has been urging trademark owners to ensure that they are engaging with ICANN’s respective processes – a call that is seemingly needed in the light of Melbourne IT Digital Brand Services’ recent study, which found that there is a low level of preparedness amongst some in the trademark community. While the study focused on US trademark counsel, it is not beyond the realms of belief that the same will be the case in Europe and elsewhere.
At time of writing, 670 public comments on applied-for gTLDs have been submitted, with concern over the ‘.porn’ and ‘.sex’ strings seemingly leading the way. At present, there is an absence of trademark-related objections, which is to be expected as these concerns will be addressed through other objection procedures. Writing this week on the Class 46 blog, Jean-François Vanden Eynde of eBrand Services argued: “Public comments will be little used by brand owners as this would only reveal their intentions and arguments to object against a specific application. Nonetheless, the public comment could be of strategic use for ‘standard’ applicants which are in contention with a community-based application in order to hinder this community-based application... and to avoid that this specific community-based application prevail over contending standard applications. In very specific and well-advised cases, the public comment may [also] serve to invite the independent objector to launch a dispute against a specific TLD, but this comment will need to be well crafted and timely posted against ‘highly objectionable’ gTLDs”.
For most, though, the formal objection will be the utilised weapon, with objections based on string confusion, existing legal rights and the existence of limited public interest in a string permitted, as well as community objections.
Given the sheer number of applications, Ashe-lee Jegathesan, general counsel for Melbourne IT, suggests a multi-staged approach: “The obvious first check should be for any name that infringes or potentially infringes on a trademark, and to decide whether or not the potential infringement is something that the organisation wishes to take issue with”. Given that the formal objection period has about six months to run, she suggests that challenges based on trademark and legal rights infringement can then be temporarily placed to one side “because you have some time to review the specifics of the case and prepare and file your objection”.
However, she argues that “concerns with applicants of generic names or concerns that are not primarily related to possible trademark infringement need to be addressed immediately because of the tight public comment window to do so. This means examining the many applications for generic names such as ‘.store’, ‘.hotel’, ‘.music’, ‘.baby’ and so on. Every organisation will have a different risk profile and tolerance level, but brands should look first at the generic names that are relevant to their business. The questions IP lawyers should be asking are things like: does the applicant have a strong rights management policy? Is the applicant’s business model sound? How does the applicant plan to deal with domain abuse? How will this gTLD impact on my company’s /my client’s digital strategy? If they have concerns, they need to voice them in the public comment period”.
Many trademark counsel are already plugged into the gTLD process, while others may have scrutinised the application list and assessed that further action and engagement is not required. But for those who have not yet considered their strategy, the clock is ticking.
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