[bc-gnso] RE: Melbourne IT proposes special class of TM protection

[Phil Corwin]

Steve:

Thanks for passing this along. After last week’s ruling in US District Court in California reaffirming that ICANN is subject to US antitrust law (based on the precedent 9th Circuit Court of Appeals decision in the  CFIT case that an ICA amicus brief helped revive several years ago) the issue of defensive registrations takes on added importance for the entire new gTLD program.

Initial thoughts:

·         The paper asserts “The framework established by ICANN provides sufficient protection for the vast majority of organizations that are trademark holders. Trademark holders will have the first right to register names in relevant categories (e.g. the Hilton hotel chain would have the first right to register in Hilton.hotel), and for categories that are not relevant, trademark holders will be able to rely on the URS and UDRP procedures to stop the misuse of names.” but then goes on to suggest criteria for the High At-Risk Marks (HARM) that could be met by many global brands. So it may not be as narrowly targeted as it purports to be – although it is not altogether clear how the proposed 100 point scoring mechanisms would work.

·         The validation of registrant contact details is, to my understanding, an issue that is currently  under discussion in the RAA negotiations.

·         The proposed alterations to the URS raise the issues of loser pays for  a single domain (this was already reduced from 25 to 15 names by the Board) and adequate due process in terms of response time measured by fee payment (automatic suspension if no response in 48 hours; Board already reduced response time from 20 to 14 days). ICA’s goal is to assure that URS provides adequate due process to registrants prior to domain takedown and does not become a SOPA-like process prone to abuse.

While ICA is sympathetic to the potential defensive registration costs that may be borne by some TM holders, I will have to survey my members to gauge their reactions to these proposals. Each of them is complex and may well spark an extended ICANN community discussion that suggests alternative approaches.

Overall, the adoption of such alterations to the existing provisions of the Applicant Guidebook would, in my opinion, clearly constitute policy alterations and not implementation details and therefore should be subject to the normal process for such matters involving the GNSO Council.

Best regards,
Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
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From: owner-bc-gnso at icann.org [mailto:owner-bc-gnso at icann.org] On Behalf Of Steve DelBianco
Sent: Monday, August 20, 2012 10:44 AM
To: bc-gnso at icann.org
Subject: [bc-gnso] Melbourne IT proposes special class of TM protection

An intriguing proposal.

Melbourne IT Urges ICANN to Consider Stricter Protections to Minimize Consumer and Business Harm in New gTLDs

Releases Community Discussion Paper to protect consumers and organizations from the misuse of well-known names; Invites concerned organizations to support and help further develop policy proposal

http://www.melbourneit.info/news-centre/Releases/Minimizing_HARM_Aug_2012.pdf

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