The head of ICANN's IP constituency has told attendees at INTA's annual meeting to “pay attention” to pending changes to the oversight of ICANN.
Kristina Rosette, of counsel at Covington & Burling LLP, was providing an update on the new generic top-level domains (gTLDs) in one of the opening sessions today, May 12, at the meeting in Hong Kong.
Before advising on brand protection strategies, Rosette discussed the importance of the US government's decision to walk away from the contract with ICANN that allows it to oversee the organisation.
The government has said ICANN should find a suitable replacement by consulting the 'multistakeholder community' but that it will not accept any governments or intergovernmental organisations taking over.
Despite this, Rosette explained, some parts of the press have characterised the government's decision as “giving up some of the internet”.
She encouraged trademark owners to participate in the discussions about replacing the US government, and that “if you or your clients depend on the DNS [domain name system], this matters to you”.
“If you're not paying attention, I suggest you do,” she added.
Moving on to protecting trademarks in the new gTLDs, Rosette said it is incumbent on lawyers to choose the appropriate strategy, although a particularly useful and cost-effective one is to “work backwards”.
This requires assessing the applied-for addresses, deciding which are the most relevant from both a defensive and offensive viewpoint, and then identifying what the rights protection requirements are at the registry.
She added that, to date, 49 cases have been filed under the Uniform Rapid Suspension System (URS), a new system designed to tackle cybersquatting more quickly than the existing Uniform Domain Name Dispute Resolution Policy.
Of those cases, the US-based National Arbitration Forum has handled 46, and brand owners have prevailed in about 78 percent of them, which “is not as many as I thought at this time”, said Rosette.
One of the main lessons to learn about the URS is that complainants must demonstrate clear and convincing evidence of cybersquatting, she added.
The INTA conference runs from May 11 to 14.
This story was first reported on in WIPR.
inta 2014, icann, ip constituency, gtlds, kristina rosette