(This article has been updated – the new information is italicised below)

A new community discussion paper, launched today by Melbourne IT, is calling for greater protection for those brands most at risk of cybersquatting at the second level of new generic top-level domains (gTLDs). The organisation is now seeking community feedback on the proposals, which it aims to present at the next ICANN meeting.

The trademark community has long been concerned with trademark protection at the second level of gTLDs, and today Melbourne IT published a community discussion paper, which proposes that organisations with ‘High At-Risk Marks’ (HARM) should be given greater protection at the second level.

Melbourne IT’s CEO and managing director, Theo Hnarakis, explains: “ICANN’s current guidelines and initiatives to protect trademark holders do not go far enough. The community discussion paper aims to form the basis for a strong, credible and balanced policy document developed by the community to put to the ICANN community for consideration at ICANN’s Toronto meeting in October. I encourage all concerned businesses, governments, non-profit organisations and consumer interest groups to join us in developing this policy into a compelling solution for what is likely to be a significant problem for consumers online.”

So, onto the detail. Essentially, additional protection is suggested for those brands that are frequent victims of “unscrupulous persons or organisations that use online techniques to mislead the general public. This is particularly the case where consumers may be misled to either conduct online financial transactions, or provide highly confidential personal or financial information”.

For those organisations most at risk (the paper suggests PayPal and Red Cross as being two examples), Melbourne IT calculates that the cost of defensively registering in 1,000 new gTLDs could equate to $100,000 per mark per year. It therefore suggests an addition to the current trademark protection mechanisms: the owner of a HARM should be able to register the mark as such in the Trademark Clearinghouse and pay a one-off blocking fee to register the name during new gTLD sunrise phases, with no ongoing renewal fee and the domain name not resolving (a process it notes was successfully used during ICM Registry’s ‘.xxx’ Sunrise B process).

The natural question trademark owners will ask is how a mark actually qualifies as a HARM. ICANN previously rejected the notion of a globally protected marks list (GPML) and, in light of this, Nick Wood, managing director Com Laude and Valideus – and a member of ICANN’s Implementation Recommendation Team (IRT) – notes that the proposal contains much to support: “The concept appears to have borrowed heavily from the IRT’s GPML, an idea that we put forward three years ago when asked by the ICANN board to recommend rights protection measures for the new gTLD programme. The IRT debated the concept of blocking lists at length. Some felt it had merit, others were more cautious. None of us could decide what the rules for eligibility should be, though we rejected the idea that is should consist of famous or well-known trademarks only. But what should be on the list – registered trademarks only? Where should the line be drawn – a registered mark in 75 countries? In 100? What about considering the number of UDRP actions? Or UDRP and DRS actions? Or UDRP and DRS and court actions? How do you protect brand new brands with a global footprint? Should a block cover identical and confusingly similar variations? What about the goods and services of the parties involved? Instinctively we felt that the GPML should be for a few ‘trademark supernovas’ which suffer extraordinarily high levels of infringement.”

The IRT requested ICANN staff to collect relevant trademark registration data, and refrained from recommending particular numbers and thresholds at that time, pending the collection and review of the relevant data. It emphasised, however, that  IRT emphasizes, that the final number and thresholds to be adopted for the GPML, including the required number of registrations and countries, “must be sufficiently high such that the marks that qualify for the GPML are actually recognised as globally protected”. However, Woods explains: “The ICANN staff did not consult. Whether it was at the direction of the ICANN Board (who then, as now, included in their number Melbourne IT’s chief strategy officer Bruce Tonkin) or an executive decision of the staff, the globally protected marks list was dropped.”

The ‘.co’ top-domain level launch showed how additional protections could be afforded to the global brands that best protected themselves online. The subject of some debate, the ‘.co’ GPML considered aspects such as the reach of trademark registrations and a history of being attacked by cybersquatters. 

Melbourne IT’s proposal builds on similar concepts, with a set of objective criteria laid out and two requirements having to be met in order to qualify as a HARM. Namely, a minimum number of the objective criteria need to be satisfied, as well as attainment of a minimum score against those criteria. The proposed minimum criteria are: 

• Legal protection (via trademark laws or other legal protection of the name) in at least three of the five ICANN regions (North America, Europe, Africa, Asia/Australasia/Pacific, Latin America/Caribbean). All trademark registrations must have been issued five years before the date of validation into the clearinghouse.
• The second-level domain name for the organisation’s primary online presence must match the HARM (eg, if the mark is ‘example’, then a corresponding domain name would be ‘example.com’).
• The HARM must be distinctive and must not match common words (eg, in dictionaries of 10,000 common words) used in the six UN languages (English, Arabic, Chinese, Spanish, Russian and French) (eg, marks like APPLE or GAP may not be eligible).
• The organisation should demonstrate that the HARM has been the subject to misleading and deceptive conduct online as evidenced by a minimum of five successful UDRP actions, court actions or documented suspensions by a top-10 registrar (which will have formal processes for determining when to suspend a domain name).

The paper goes on to propose a requirement that new gTLD registries validate at least two elements of a registrant’s contact details (eg, phone number, email address and postal address) and, in an echo of last week’s call by several prominent US politicians, the extension of the Trademark Claims process indefinitely. Additionally, it suggests the rapid take-down (within 48 hours) of a URS complaint, unless a response fee is paid equivalent to the URS fee paid by the complainant (with the winner of the dispute receiving a refund on their fee).

Considering the proposals, Wood told WTR that he is “pleased to see the idea of a blocking list under consideration again. Something must be done to protect rights owners at the second level in the 1200 + new registries that are coming our way. Whilst I remain convinced that the magic bullet is ‘loser pays’, blocking lists - whether or not they come with scoring systems like Melbourne IT propose - have a valuable role to play”. 

Melbourne IT is now seeking community engagement on the proposals and intends to hold a working group summit in Washington DC next month, before formally presenting them to ICANN.