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

[Nahitchevansky, Georges]

See the attached.  This might be something to write an article in response to

From: mkaranicolas at gmail.com
Sent: February 25, 2020 4:11 PM
To: gnso-rpm-wg at icann.org
Subject: [GNSO-RPM-WG] On ICANN, RPMs, and trademark




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.

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