Key developments in Durban
- The first four new gTLD contracts (IDNs for web/network, online, website, and game in Arabic, Russian and Chinese) were signed. These first new gTLDs are set to go live with Sunrise registrations by Q4 2013.
- Registrars began signing the 2013 Registrar Accreditation Agreement.
- The Governmental Advisory Committee (GAC) advised ICANN’s Board that in governments’ views, geographic terms – even terms not appearing on ICANN’s block list – trump global trade mark rights.
Additionally, a number of new gTLD Rights Protection Mechanisms (RPMs) updates have emerged:
Legal Rights Objections
WIPO Experts (outsourced as in the UDRP) have decided nearly one-third of the 70 LRO cases filed. While the reasons have varied, so far, all decisions have resulted in the objection being rejected. While there is no body of precedent per se, some key themes are emerging:
- Experts are viewing trade mark rights acquired solely for new gTLDs and LROs with suspicion (.home .tunes .cam).
- Trade marks that are also generic terms will be viewed against possible co-existence (.express .home .mls .pin .vip .limited .song).
- Trade marks that incorporate the applied-for new gTLD and other letters/terms may mitigate against likely confusion (.limited .mail).
- LRO Experts will consider any territorial limitations on a mark (.yellowpages .mls).
- LRO cases are not designed to decide between bona fide third party uses in different business sectors (.rightathome).
No objector has been able to show that a new gTLD application is likely to infringe its trade mark rights. With collective costs running into the millions, the merit of ICANN’s LRO process is in doubt. This may put considerable pressure on brands to apply in the future to run their own new gTLDs.
Uniform Rapid Suspension mechanism
The URS mechanism offers brand owners a quicker and cheaper alternative to tackle cybersquatting compared to the UDRP. Filing a URS case with the National Arbitration Forum will cost you an average $375 (plus any attorney fees) and decisions are expected to come in under a month (compared with $1300+ and 2+ months for the UDRP). Unlike the UDRP’s transfer remedy, under the URS, a domain name is suspended and pointed to a blank URS page for the life of the registration (this suspension can be extended for one year, for a fee). Cases can only be filed electronically.
The Trademark Clearinghouse is advertised as a central repository for trade mark data – to be used for Sunrise registrations, Trademark Claims (a notice to you of a registration matching your mark, for the first 90 days of a particular new gTLD), and the URS – but trade mark owners have submitted a mere 7,000 marks to date.
This low number indicates that brand managers are delaying Clearinghouse costs ($150 per mark entry plus any subsequent Sunrise costs) as long as possible. To some degree it shows a continuing reluctance of brand owners to buy into the New gTLD Program; while understandable, this wave of new internet addresses cannot be simply swept under the rug.
By Brian Beckham of Valideus. Members of the MARQUES Cyberspace Team took part in the ICANN Meeting in Durban and continue to monitor gTLD developments