By Adam Smith
June 09 2009
David Taylor, a partner at Lovells, was supposed to be enjoying a holiday in South Africa. Instead, he found himself debating the future of the protection of trademarks online - from the top of a mountain. Just a few weeks earlier, Taylor had agreed to join the Implementation Recommendation Team (IRT), the crack panel of experts assembled by the Internet Corporation of Assigned Names and Numbers (ICANN) to address the thousands of comments concerning trademark protection upon the introduction of generic top-level domains (gTLDs). To ensure he was available for an online conference with the rest of the team, Taylor had found a signal hotspot on a nearby mountain.
"It was unbelievable to be online in the middle of Africa, with no power connections, communicating directly to 18 people dotted all across the globe, discussing issues which could shape the Internet," he says. As the batteries in his gadgets died and the sun went down, Taylor was left in complete darkness, musing on just how powerful an open and fair Internet could be. ICANN itself pursues the same ideal. The non-profit organization was founded to encourage competition and choice for all TLD registrants. Over a decade since its formation, ICANN is now preparing to revolutionize web navigation by introducing new gTLDs.
It cannot be denied that gTLDs are an innovative step. But to say brand owners are uncomfortable with the idea is an understatement. Indeed, IP teams in many of the world's leading companies have publicly slammed ICANN's plans (see "Leading brand owners criticize ICANN over gTLDs"). Consistent with its mandate to consult all members of the community, ICANN naturally wanted to capture this dissent. "ICANN is inherently noisy because it is a bottom-up model," Paul Twomey, president of ICANN, told WTR in March. "For the last couple of months, the IP community has said it is not happy with gTLDs. We have specifically asked that community to work out some solutions." The IRT, then, was to be unlike anything ever seen before in the world of trademark protection: a panel comprising senior corporate counsel plus a geographically and experientially diverse group of private practitioners, academics and domain name registrars. The "dream team" (as described by the group's chair, Caroline Chicoine, a partner at Fredrickson & Byron) would listen to and consider the comments of anyone, from global corporations to small businesses and individuals, with an opinion on gTLDs.
So that work could start on this immense task, the team had to be assembled rapidly. ICANN wrote to prospective IRT members, outlining that they would be working intensely over an eight-week period (the assignment would likely take up over one-third of their working week), that it would involve tight deadlines and a lot of travelling. "ICANN needed to know immediately whether we could participate," remembers Ellen Shankman, former chair of the International Trademark Association's (INTA) Internet Committee. "They could not wait while we thought about it." For Shankman, the decision was a no-brainer. She began preparing for the first meeting in Washington, DC right away.
At this first meeting it became apparent that the IRT members had no time to waste on formalities: they had over 2,000 comments, submitted to the various ICANN consultations on gTLDs, to read, categorize and prioritize. "We spent a great deal of time organizing priorities while recognizing that the other issues were important and not limiting the scope of what we wanted to discuss," recalls Shankman. The group spent three days in DC, working round the clock to flesh out its plan for a draft report - while at the same time tending to work commitments at home. Upon the publication of the draft, the IRT held a further three-day face-to-face meeting in San Francisco, listening to the thoughts of stakeholders and consulting with various bodies such as internet registry Nominet and the World Intellectual Property Organization to produce a final report which would then be open for further public scrutiny.
The final report was published on May 29 (see "Trademark owners get a chance to have their say on new gTLDs"). "In the end I would say I had spent almost double the originally suggested time commitment," says Taylor. Shankman agrees: "I long ago stopped keeping track of the hours." ICANN's bottom-up structure made the process particularly time consuming. "I find the whole bottom-up process fascinating," says Taylor. "It takes time, but the way it brings together such a community of volunteer stakeholders who seek to develop new policies via consensus is unique."
Comments have been flooding in: so far they are largely critical of the report's crucial Uniform Rapid Suspension system (URS). "Criticism was inevitable," says Taylor. "But we know we gave it everything we could in the timeframe but we are the first to admit that our tapestry of proposed solutions is not a magic carpet!" The team will take the report on tour, first to Sydney at the 35th ICANN meeting then to London, New York, Hong Kong and Abu-Dhabi, to encourage debate. "Our work is just beginning," says Stacey King, an IRT member. "Those who were not able to be involved with the IRT or who are concerned with online brand abuse and fraud should take this opportunity to comment on the report, attend ICANN meetings, and have a say in the next phase of the Web."
Adam Smith, World Trademark Review, London
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