Trademark owners propose new gTLD protection measures
Increasing the scope of the Trademark Clearinghouse is one of five rough proposals to emerge from discussions on enhancing trademark protection under the new generic top-level domain (gTLD) programme.
Google and Microsoft are two gTLD applicants that attended the meeting in Washington DC on September 18. Hosted by brand consultant Melbourne IT, the discussion follows increasing calls for the Internet Corporation for Assigned Names and Numbers (ICANN) to strengthen trademark protection before it delegates the domains later next year.
Two of the five proposals cover the Trademark Clearinghouse, a database of marks that will notify an Internet user (and the IP owner) if it tries to register a trademarked term. The Clearinghouse’s operators will stop sending notifications 60 days after an individual registry launches. But brand owners want these notifications to be available during “ongoing registration”, according to a document from the Washington meeting.
Brands also want to submit their trademarks plus a keyword, so that, for example, PayPal could be notified about ‘paypalpayments’ as well as ‘paypal’. “The choice of such terms could be based on terms used in a trademark registration, or terms frequently associated with a brand in online infringement decisions,” the paper said.
The three remaining proposals are: to authenticate registrants’ identities using email addresses and possibly centralise other forms of validation (such as home addresses); to allow some rights holders (subject to unspecified criteria) to reserve their marks across multiple open gTLDs, or introduce centralised sunrise periods; and to improve the Uniform Rapid Suspension System (URS) process by, for example, reducing costs when a registrant doesn’t respond to a complaint.
The URS, a new dispute resolution process, is still untested and ICANN has struggled to find anyone to manage it for the proposed fees of $300 to $500 per case.
A recent letter from ICANN president Fadi Chéhade did not read well for trademark owners. In the letter, sent to US senators and members of Congress in September in response to a letter from the politicians, Chéhade seemed to rule out extending the Clearinghouse’s 60-day claims period. “One reason for this is that there are existing IP watch services that address this [sic] needs.”
He added that the Clearinghouse should not accept registrations for brand plus keywords. “Extending the protections offered through the Trademark Clearinghouse to any form of a name (such as the mark + generic name suggested in your letter) would potentially expand rights beyond those granted under trademark law.”
The groups which met in Washington were due to attend ICANN’s public meeting in Toronto (October 14 to 18) to tweak their proposals. They will continue to urge ICANN to reconsider its policies on trademark protection.
