ICANN acknowledges concerns regarding new gTLD system

The Internet Corporation for Assigned Names and Numbers (ICANN) has passed a resolution to appoint a committee of interested stakeholders to consider trademark protection issues in the context of the new generic top-level domain (gTLD) system.

Following ICANN's proposal to enable the creation of a new gTLD system and the release of its draft Applicant Guidebook 2008, trademark owners have expressed considerable concern about the resulting potential for a substantial increase in cybersquatting disputes. 

Although there is to be a pre-delegation dispute resolution procedure, trademark owners are concerned about the possible misuse of gTLDs in the post-delegation phase, which has not been addressed by ICANN’s proposals so far. Without additional protections, implementation of the current proposal as it stands is likely to result in considerable additional expense for trademark owners, whether in litigating cybersquatting issues or in implementing defensive registration strategies.
At its board meeting of March 6 2009, ICANN acknowledged these concerns by passing a resolution to appoint a committee to consider these issues and to prepare a draft report by April 24 2009, with a final report to be prepared no later than May 24 2009, in time for ICANN’s next board meeting.
In the meantime, the World Intellectual Property Organization, which developed the proposed pre-delegation dispute resolution procedure, submitted a proposal for a post-delegation dispute resolution procedure which builds on the Uniform Domain Name Dispute Resolution Policy and the proposed pre-delegation procedure, but is more akin to an expedited arbitration procedure. This procedure is to be available where:
  • a registry uses a new gTLD for a purpose which is inconsistent with its original representations concerning the domain name such that a trademark owner’s rights are being infringed; or
  • a gTLD operator “turns a blind eye to systemic cybersquatting in its domain”. 
It is proposed that panels would be able to grant remedies, including:

  • transfer, cancellation or locking of the domain name;
  • injunctive relief;
  • implementation of appropriate trademark rights protection mechanisms;
  • termination of contracts with selected registrars; or
  • making recommendations through ICANN.
At this stage, WIPO’s proposals are necessarily preliminary. However, they offer an extremely useful starting place for consideration of a post-delegation procedure by the ICANN committee. Some kind of post-delegation dispute resolution procedure is undoubtedly necessary to address these issues. Otherwise, there will be either a massive increase in domain name-related trademark litigation, or a proliferation of defensive domain name registrations by trademark owners. 
Arguably, not putting any procedure or additional controls in place is not all bad from a purely selfish perspective, as it is likely to help keep trademark lawyers in business for years to come. However, this is hardly consistent with a goal of achieving an efficient and cost-effective domain name system. It will be interesting to see the draft report in late April and the outcome at ICANN’s next board meeting.

For background discussion of this issue please see "Historic expansion in gTLDs approved" and "Draft Applicant Guidebook for new gTLDs released".
Alistair Payne, Matheson Ormsby Prentice, Dublin

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