[GNSO-RPM-WG] On ICANN, RPMs, and trademark

[Michael Karanicolas]

Hi all,

Of possible interest to this working group, my latest paper, "The New
Cybersquatters: The Evolution of Trademark Enforcement in the Domain Name
Space", has just been published in the Fordham Intellectual Property, Media
and Entertainment Law Journal. It discusses ICANN's rights-protection
mechanisms in the context of broader trademark law principles (and there's
even a few cameos from folks in the working group).

If you're interested, you can download it at:
https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3528237

Cheers,

Michael Karanicolas
Resident Fellow
Yale Law School

*The domain name space has become a particularly contentious area of
trademark enforcement as a result of the growth of online commerce, an
intense competition for popular domain names, and new conceptual challenges
stemming from the borderless and textual nature of the medium. In response,
the Internet Corporation for Assigned Names and Numbers (“ICANN”), a global
non-profit which oversees the domain-name space, has implemented a highly
sophisticated set of rights-protection mechanisms. This Article examines
the scope of trademark protections applied under ICANN’s rights protection
mechanisms to demonstrate that they have evolved far beyond their
traditional consumer protection function; indeed, they have morphed into
offensive brand management tools, whose application in the global domain
name space vastly exceeds the protections that are available under domestic
legal frameworks. The Article begins by introducing ICANN and its main
trademark protection instruments, namely the Uniform Dispute Resolution
Policy, the Uniform Rapid Suspension, and the Trademark Clearinghouse,
before demonstrating the divergence between protections under these systems
and the protections under domestic legal frameworks. The result is that
trademark owners turn to ICANN for rights and remedies that would not be
available from ordinary sovereigns, embodying a major expansion of
trademark protections. The Article concludes by outlining the contours of
ongoing discussions re-examining these mechanisms, and the challenges in
curbing this maximalist view of trademark law.*
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20200225/e3e961a3/attachment.html>