Strawman model: ICANN responds to rights' owners concerns


Trademark owners appear to have made headway in their long-running attempts to enhance the mechanisms for protecting their rights in the new gTLD space.

Following a private meeting on November 15 with IP owners and other groups, ICANN chief executive Fedi Chehadé has proposed a so-called strawman model. The proposal meets some of the requests rights holders had made before the discussion in Los Angeles.

The unapproved model, published in a blog post on November 19, also proposes a new mechanism to supplement the trademark claims period, which requires the Trademark Clearinghouse to send warnings to potential cybersquatters.

Before the meeting IP owners wanted the trademark claims to extend from 60 days to an “indefinite” period. ICANN now proposes introducing a 90-day window.

The strawman proposes adding a new ‘Claims 2’ period, which will last for six to 12 months and require an additional (undisclosed) fee. The Clearinghousewill continue sending notifications but will not necessarily provide the same information about registered trademarks as before. It is not clear why.

Under the model IP owners will able to register their marks along with up to 50 “abused variations” of them in the Clearinghouse, Chehadé said. At the moment, the central repository for marks will accept only identical matches.

There will be a test for these variations—such as whether they have been subject to a successful Uniform Domain-Name Dispute-Resolution Policy filing or court proceeding.

Additionally, new gTLD operators will have to publish the dates and requirements of their sunrise periods 30 days before they launch. IP owners wanted ICANN to extend the sunrise period from 30 to 60 days.

The meeting rejected the idea of a system that would permanently block certain trademarks at the second level.

The proposals are not set in stone, and there will be follow-up calls with the groups in Novemberto review “additional feedback”, Chehadé said. He added that he will next focus on the Uniform Rapid Suspension System, a new but untested dispute resolution mechanism.

The strawman model was criticised in a blog post by Robin Gross, who represented the Non- Commercial Stakeholders Group at the meeting. “The strawman was discussed at the meeting many hours after the time that had been announced for policy discussions, and thus it was developed after many participants (including me) had already left the meeting to catch our flights back home.”

She added: “The most troubling concern is that the Intellectual Property and Business constituencies keep coming again and again to renegotiate the same policies. It’s further upsetting that ICANN then feels pressured to develop policy proposals in this inappropriate manner.”

Separately, in a comment on Chehadé’s blog post, ICANN was criticised for holding the meeting behind closed doors, when “its DNA is openness and transparency”.

This article was first published on 01 December 2012 in World IP Review

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