Our last issue of the Cassels Brock Report included a discussion regarding the changes to the generic top level domain ("gTLD") regime that is being designed by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As readers may recall, ICANN has commenced a process in which brand holders may apply to obtain customized gTLDs (i.e. such as .nike, .canon, etc.) and to operate their own domain name registry under new gTLDs. While the procedures have not been finalized and are taking considerable time to refine, ICANN is steadily moving towards an adoption of this approach.
The recent ICANN meetings in Kenya included discussions regarding protections for trade-mark holders that we can expect to find within the new gTLD regime. The discussions during the Kenya meetings focused on three main areas of trade-mark protection, all of which had been debated and discussed by ICANN's Special Trademark Issues Drafting Team. Those three main areas are a proposed trade-mark clearinghouse, a uniform rapid suspension procedure and post-delegation dispute resolution mechanisms. A period of public comment expired on April 1, 2010 and ICANN is currently developing model rules for each of these three procedures that will be included in the upcoming Draft Applicant Guidebook (version 4). Each of these three protection solutions will be discussed below.
- Trade-Mark Clearinghouse
The concept of a Trade-Mark Clearinghouse has been adopted by ICANN and is an attempt to permit trade-mark holders to have their marks included in a central repository which is intended to prevent the registration of new gTLDs that infringe pre-existing trade-mark rights. The concept of the clearinghouse, while one that could be advantageous, does raise some serious questions. One of the most basic is which marks are entitled to be included in the clearinghouse. At present, ICANN's proposed rules would suggest that only marks that have been registered in a country that has a substantive examination procedure (like Canada's system) or marks that have been recognized as valid and enforceable by a court action would be included in the Clearinghouse. Unfortunately, a definition of substantive examination has not been formulated and, as such, questions remain as to whether particular marks can be protected under ICANN's proposal. While the clearinghouse concept has yet to be finalized, it appears clear that in an application for a new gTLD, a complaint process could be initiated by anyone who has a trade-mark registered within the centralized database. Of further note is the debate that will most certainly continue regarding funding for the clearinghouse. At this point, it does not appear that ICANN is prepared to absorb the cost of this registry and that costs should be met by the users of the system.
- Uniform Rapid Suspension ("URS") Procedure
The URS Procedure is one that ICANN has designed to work in concert with the well known Uniform Dispute Resolution Proceedings ("UDRP"). The URS has been formulated to deal with issues where there is very clear-cut instance of trade-mark abuse. At this point in its development, there appear to be two main differences between the well-known URS and the UDRP proceedings. The first is the standard of proof that will be required of complainants in both proceedings. In the UDRP proceeding, the well known "preponderance of evidence" standard is the one adopted. The standard of proof in a URS proceeding will differ and will require clear and convincing evidence that the registration has been made in bad faith and that the registrant does not have legitimate rights in the domain name. Secondly, it appears clear that the URS procedure will not result in the transfer of a domain to the complaining party. The URS proceeding will simply suspend the problematic domain. In addition the URS procedure appears to only be applicable if a complainant has a registered trade-mark from a jurisdiction whose trade-marks office conducts a substantive review of trade-mark rights. As discussed above, the term "substantive review" has not to be properly defined.
- Trademark Post Delegation Dispute Resolution Procedure ("PDDRP")
The proposed PDDRP procedure is one which is meant to provide additional protections to trade-mark owners but is not meant to be an impediment to the operators of new gTLD registries that may simply have infringing names within its gTLD. In short, the PDDRP will only apply to trade-mark owners ability to seek relief against registrars that have operated in bad faith (i.e. ones which operate registries that systemically participate in cybersquatting-type activities). While some basic proposed rules have been established, a May 3, 2010 discussion discussed the Trademark PDDRP and its inclusion in a new gTLD Agreement. Is it hoped that the May 3, 2010 meeting, and future revisions to the draft policy, will assist in defining the precise role of the PDDRP.
It is yet to be determined whether these three trade-mark protection components will address the concerns of trade-mark holders and will allow ICANN to continue its plans to move towards the adoption of new gTLDs. One of the international bodies that will most certainly have comments upon these matters is the International Trademark Association ("INTA") which is holding its annual meeting in Boston from May 22 to 26, 2010. INTA has already scheduled seminars to discuss ICANN's proposals. INTA, the overriding goal of which is to protect the rights of brand owners across the world, will be certain to take an in-depth view of the protections that ICANN proposes.
We will continue to follow developments related to the new gTLDs and will keep our readers updated as new developments emerge.