In the rush to launch new gTLDs, many feel that IP concerns have been marginalised, but now’s the time to rally round, says Jonathan Cohen.
Although there continues to be a strong feeling in many Internet Corporation for Assigned Names and Numbers (ICANN) communities that there is no public demand for the programme, and no proven public need, ICANN’s board of directors has decided to move forward with the new generic top-level domain (gTLD) programme.
The introduction of an ‘unlimited’ number of new gTLDs is likely to create a ‘land rush’—in the top and second levels—of previously unheard-of proportions. The clear winners in this situation are those in the domain name business, namely, those who will become ‘back-end’ registrars for the many new gTLDs, and the registries which will have hundreds of new gTLDs in which to sell domains.
Also, some will sweep up as many desirable domains in new gTLDs as possible— including those which contain trademarks—and then try to re-sell them for a considerable profit. The Uniform Domain Name Dispute Resolution Policy (UDRP) is available as a defence to this practice, as is court action, but if the sale of the domain name is properly priced, many brand owners will choose to pay, as it is quicker, cheaper and certain, and the domain purchasers know this.
Many brand owners are concerned that they will need to create or increase costly domain name defensive positions in new gTLDs because of a few unscrupulous registrants and the less-than-satisfactory rights protection mechanisms built in to the programme.
A year hence, it will be interesting to examine the collective cost to brand owners who were forced to seek defensive registrations in new gTLDs against the net gain by various registrars and registries. It will also be interesting in two or three years’ time to see whether many new gTLDs are successful for the purpose sought.
So, with these concerns in mind, who is speaking for, and defending the position of, brand owners at ICANN?
The Intellectual Property Constituency
The Intellectual Property Constituency (IPC) is one of six constituencies of the Generic Names Supporting Organization (GNSO) of ICANN, charged with advising the board of directors on policy issues relating to the management of the domain name system.
The IPC consists of a dozen or so active members, the core of whom carry a continuing, and heavy, burden of trying to make known to the board and the ICANN communities the position and concerns of brand owners and IP practitioners. Many have been doing this since 1998 when ICANN started, and have put in many thousands of hours that are unpaid, and unsung.
The IPC’s struggle to represent brand owners in light of the new unlimited gTLD world has gone largely unnoticed. In the new gTLD saga, it is often overlooked that it was at the request of the IPC that the board created the Implementation Recommendation Team (IRT), a group of real experts combining both long experience in trademark and domain name law and experience of the workings of ICANN.
This group of practitioners also included a representative from each of the non-commercial, registrar and registry constituencies to provide necessary information and balance to the IRT’s proposals. They were from many countries around the world and volunteered a great deal of their time before proposing a set of inter-dependent balanced rights protection mechanisms (RPMs) and safeguards for brand owners in this new gTLD environment.
Despite the best efforts of the IPC, however, the RPMs finally adopted by ICANN, while clearly of some assistance, were ‘watered down’ and fall short of those recommended by the IRT and advocated by the IPC.
As a result, brand owners may be forced to take defensive positions, including creating a stable of unwanted domain name registrations which, even in today’s gTLD world, may number in the tens of thousands.
“THE IPC NEEDS THE LONG-TERM SUPPORT AND COMMITMENT OF MAJOR BRAND OWNERS AROUND THE WORLD TO ENSURE THAT THE REASONABLE POSITIONS OF BRAND OWNERS ARE CLEARLY HEARD AND UNDERSTOOD.”
While the IPC has vigorously defended the position of brand owners, the vast majority of those who need protecting either were unaware of the new gTLD initiative and associated risks, or chose not to get involved in the discussion until it was too late, despite the seriousness of the issue.
This could be because it has never really been made clear what forums exist for brand owners to participate in ICANN, and actually help shape the future of the Internet, rather than just reading about the developments after they have occurred.
Relatively few of the largest brand owners around the world are involved directly; more are involved indirectly through IP organisations, but despite their hard work and participation, they still represent only a tiny fraction of brand owners around the world. Yet ICANN’s structure—and within it, the IPC—makes it possible essentially for every IP owner to become directly involved and, collectively, make a difference.
Many voices have argued that the IPC is trying to stand in the way, or delay the introduction, of the new gTLD programme. It is important to understand that the IPC and IRT were, and are, not against the introduction of new gTLDs, as long as it is done intelligently.
The IPC has spent years trying to explain that it is not an enemy of non-commercial interests that purport to ensure rights to privacy are respected, or an enemy of the rights of registrars and registries who are in the domain name business, but its voice is often drowned out by money, numbers, and misunderstanding.
Ultimately, most people connected with the Internet, including brand owners, are excited by the potential for innovation and new ideas.
The aim is not to hold back gTLDs—it is to ensure that this is not done at the unreasonable expense of brand owners, and to ensure that less scrupulous registrants are not allowed to proceed unchecked, costing millions that simply line the pockets of those who play fast and loose with the rules, and lending nothing to the Internet or innovation which, brand owners hope, will come out of the growth of the Internet.
In fact, one of the good things about the introduction of new gTLDs is that it has dramatically broadened public awareness of ICANN, including among brand owners. Many hope that this will result in more brand owners becoming active members, providing muchneeded financial and human resources to the IPC.
The IPC has limited resources because it does not receive dues from the corporations for whom it is trying to be a voice in the community. The IPC needs the long-term support and commitment of major brand owners around the world to ensure that the reasonable positions of brand owners are clearly heard, understood, and factored into pertinent policy decisions by the ICANN board.
This is a call to action for brand owners: only the number of members, quality of representation within the IPC, and financial resources will help make a difference to the positions of brand owners as ICANN moves forward with the launch of new gTLDs, and other initiatives in the future.
The UDRP is targeted for review some time in the next year or two. The review is being spearheaded by non-commercial and registrar groups who have many reasons why they would like to see the UDRP changed, or even eliminated.
A thorough review of UDRP after 15 years is a reasonable idea, if it is for the purpose of streamlining the process, or looking for ways to improve its usefulness, to save time or to reduce cost. However, if the purpose is to ‘water it down’ and remove its value for brand owners, then the one proven, effective lynchpin RPM brand owners have in the domain name system could be seriously damaged, or even lost. Brand owners need to support the IPC now.
Nobody knows for certain who will file new gTLD applications, how many applications will be filed, or how many will be accepted. It may be months before these questions are answered, years before we see how many sites go live and stay live, and which, if any, of the concerns expressed by the IPC and others are realised. In the meantime, the IPC will continue to work diligently to support the interests of, and ideally with the support of, brand owners everywhere.
Jonathan C. Cohen is the senior partner at Shapiro Cohen. He can be contacted at: firstname.lastname@example.org
This article was first published on 01 May 2012 in World IP Review
gTLDs, ICANN, domain names, UDRP, IPC, GNSO