1 June 2010TrademarksAndy Churley & Chloe Garrett

gTLDs - the latest developments

Expression of interest (EOI)

Following on from the last ICANN meeting in Seoul, and after input from various stakeholders and community groups, the decision was made to investigate an EOI model and assess how it could improve the launch process of the new gTLDs. The key objectives of the EOI model were to:

• Ascertain the number of first-round applications

• Identify instances of possible string contention

• Identify areas of potential objection

• Understand the economic benefits/risks discussion

• Identify unanticipated issues and provide flexibility

• Hasten the launch of the new gTLD programme by answering or raising issues before the decision to launch was made.

Public comment was invited at several stages and, prior to the ICANN meeting in Nairobi, an explanatory memorandum on the EOI proposal was posted, ready for discussion. The document contained the objectives, an outline of the models and the cost considerations, as well as the next steps to be taken and the timeframe should the EOI be approved.

Both panel and public discussions took place at the Nairobi meeting and the following concerns were raised:

• The proposed EOI is not actually an expression of interest but rather a pre-registration process

• Asking people to apply when the rules are still a moving target is unfair and creates uncertainty

• Developing areas may face exclusion from the EOI stage of the process due to the expense (it costs $55,000 to make an EOI and this fee is not variable)

• The size of the EOI fee favours large corporations, therefore reducing the variation of types of application and going against the intentions of the gTLDs

• The EOI phase will not truly represent the number of expected applications as many will prefer to remain confidential about their intentions, to reduce the period of time available for objections and to await confirmation on outstanding issues such as trademark protection. Therefore, the EOI would not provide the accurate data, value or benefits that the objectives originally anticipated.

Over the course of the ICANN meeting, the following questions were discussed in relation to the EOI: Should it be mandatory (to ensure accuracy of data)? Should the EOI be made public? It was also noted that many of the rules will be decided by the fourth draft of the handbook, so with this in mind will the EOI really allow any issues raised to be addressed and if necessary changed? Again, it was strongly voiced that to do this would add further delays to the timeline of the new gTLDs.

At ICANN’s board of directors meeting, the decision was passed to withdraw the EOI proposal from consideration. It was noted that much of this was as a result of the exceptional input from the community over the issue.The key reasons for the board’s decision were:

• The EOI could add a layer of exclusion to many communities wishing to apply, due to the $55,000 fee

• The data collected by the EOI could not be treated as accurate and adding value due to the large number of applicants who may choose not to make an EOI

• Ultimately, the preference was to focus staff resources on resolving the remaining issues regarding the new gTLDs rather than undertaking further work to produce a satisfactory EOI model.

The board made a special note of thanks to the community for all of its work on the EOI proposal.

Registry/registrar separation for the new gTLD

It was agreed at the ICANN meeting in Nairobi that within the context of the new gTLD process, there will be a strict separation of entities offering registry services and those acting as registrars. No co-ownership will be allowed.

Trademark protection

The protection of trademarks has been a highly contested issue regarding the new gTLDs. Due consideration has been given to public comments and there are now four aspects to the proposed model for trademark protection: Trademark ClearingHouse, Uniform Rapid Suspension Procedure, Post-Delegation Dispute Resolution Procedure and Thick WhoIS.

Trademark ClearingHouse: key features

• Centralised database

• Storage of trademark registration data

• Data authenticated by a third-party provider

• Does not create any new rights or limit any rights

• Recognises trademark registrations of national effect and court-validated common law trademarks

• New gTLD registries are required to offer Sunrise Services or Trademark Claims Services • Costs to be borne by parties benefitting from Trademark ClearingHouse.

Uniform Rapid Suspension Procedure (URSP)

The model provides an expedited take-down procedure for clear-cut cases of trademark infringement. The main provisions are:

• Defences for the registrants model incorporate fair uses of domain names

• Penalties for abusive trademark holders

• Procedures to encourage fair examiners

• URSP is an additional remedy:

-The Uniform Domain-Name Dispute-Resolution Policy (UDRP) continues to be available

-Other legal remedies are available to both parties

-Reduced costs to trademark holders versus UDRP.

Post-Delegation Dispute Resolution Procedure (PDDRP)

• Used against registries for affirmative conduct/ systematic trademark infringement or use of TLD for an improper purpose

• The relevant parties are the trademark holder and registry

• Filing fees are shared by trademark holders and registries. The loser pays the prevailing party’s filing fees • The panel will suggest graduated enforcement tools to ICANN

• Absent extraordinary circumstances, ICANN will review, approve and enforce the recommended remedies, or as amended by ICANN

• Contractual compliance, URS and UDRP are also available.

In light of the additional public comments received, ICANN has further revised the PDDRP, which is currently posted for another round of public comments.

It has been agreed that ICANN should take the remaining public comment from the community and synthesise those comments as appropriate into a final draft PDDRP. This will ensure that the varying interests of the community are considered and included in the final draft of the applicant guidebook.

gTLD communications plan

Regular programme updates are provided by ICANN staff to the community and board, and the critical information will continue to be published in six languages.

ICANN recognises that one of the main goals of the communications plan is to inform potential applicants around the world about the opportunities afforded by new gTLDs. The board voted in favour of implementing a formal launch of communications activities for the new gTLD programme.

The meeting in Nairobi was extremely productive, with some key decisions being reached. It is important to recognise just how much value is being added to the decision-making process by community involvement. The next ICANN meeting will be held in Brussels in June 2010.

Adam Churley is head of products for the corporate brand management division at Group NBT. He can be contacted at: andy.churley@envisional.com

Chloë Garrett is marketing manager at NetNames, a division of Group NBT. She can be contacted at: chloe.garrett@netnames.com

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