IP owners are heading into a meeting today armed with eight proposals for enhancing trademark protection under the new gTLD programme.
The IP Constituency (IPC) and the Business Constituency (BC), two of six stakeholder groups at ICANN, are meeting the organisation’s chief executive Fadi Chehadé and other groups in Los Angeles in a private meeting.
Attendees at the November 15 meeting will discuss the IPC and BC’s joint proposals on improving trademark protection, which IPC president Steve Metalitz outlined in a letter to ICANN on October 17.
Some of these proposals cover the two main mechanisms for protecting rights under the programme: the Trademark Clearinghouse, a database of marks, and the Uniform Rapid Suspension System (URS), a dispute resolution system.
As it stands, the Clearinghouse will notify anyone trying to register a domain incorporating a mark that is registered in the database up to 60 days after an individual registry launches. But the IPC and BC want this to extend to an “indefinite” period, ensuring the process is “easy to use, secure and stable”.
They also want ICANN to introduce the URS as a low-cost alternative to existing mechanisms which, “if necessary, ICANN could underwrite for an initial period”. ICANN is searching for someone to administer the system, which is designed to oversee clear-cut cases of cybersquatting, but has struggled so far. It is believed potential providers think ICANN’s projected administration costs of $300 to $500 per case are unrealistic.
Another proposal is for a new mechanism that would block second-level registrations of trademarks, including exact matches and “character strings previously determined to have been abusively registered or used”. This would require a fee and would need “appropriate safeguards for registrants with a legitimate right or interest”.
But the proposals can expect to meet opposition at the meeting. Chehadé has already suggested that the trademark claims period should not be extended beyond 60 days, and the Non-Commercial Stakeholders Group (NCSG) and the New TLD Applicants Group have both sent letters to ICANN asking it to ignore the proposals.
The NCSG’s letter, sent to ICANN on November 1, says many of the proposals have already been heard or rejected “a number of times in the years of previous discussions on this subject”. It adds: “NCSG is deeply troubled that ICANN is considering ignoring its own policy development process [used to create new policies] by re-opening community negotiated compromises at this late date.”
This article was first published on 14 November 2012 in World IP Review
trademark protection, talks, gTLDs, IPC, ICANN, URS