Trademark interests, like CADNA,  are actively trying to use the new gTLD process, to obtain substantial changes in current trademark protection to greatly expand their existing rights.

Of greatest concern is the fact that they are seeking:

1.   A global brand registry, that has the potential to expand trademark rights well beyond the bounds of current law, by giving special protection to trademark owners’ “virtual rights” beyond the relevant marketplace and geographic restrictions of Trademark law;

2.   A no cost, no notice, quick takedown procedure that would supplant the UDRP, for allegedly abusive domains, thereby eroding due process rights of domain registrants;

3.   A loser pays UDRP format,  it is more likely to result in an increased surrender of domains subject to UDRP actions as the potential cost of a losing defense would increase substantially (especially given the hourly rates charged by the law firms employed by major corporate TM owners).

4.  Any rules set up for the new gTLDs,  probably be imposed retroactively on incumbent gTLDs including .com, .net and .org’s.

5.  Given inordinate power to national governments over geo-related names at the first and second level of new gTLDs.

This information comes from Phil Corwin, counsel for  the Internet Commerce Association (The ICA), who  attended the ICANN Policy Forum Held on February 6th, 2009 in Washington as the representative of the ICA.

Phil Corwin laid out the concerns of The ICA in this new gTLD procees.  His concerns, are your concerns as a domain holder:

“””While we adamantly oppose cybersquatting and other infringement of brand owners’ legal rights, we are equally concerned that some of the proposals being advocated by brand owners would expand their “rights” beyond the bounds of the law while depriving domainers of due process. For example, a global brand registry would appear to ignore the geographic and relevant marketplace bounds of trademark law.

The quick take down proposal, while perhaps appropriate for websites documented to be hosting phishing scams or illegal content such as child porn, should not be a substituted for the UDRP as regards allegations of trademark infringement. The UDRP is flawed in many respects from domainers’ perspective, including a growing lack of enforcement uniformity that encourages dispute provider forum shopping, a trend toward reversing its presumptions in favor of complainants, a lack of binding precedent that results in every issue being considered de novo, and significant costs that sometimes results in the surrender of a domain subject to a weak complaint filed by a major corporate interest with deep pockets.   While the UDRP may need reform it does at least provide some reasonable due process to the domain holder.  A quick take down proceedure with no notice to a domain holder, therefore giving the domain holder no right to defend himself before the take down order is granted is very troubling.

While the ICA opposes cybersquatting and trademark infringement it believes that ICANN-provided brand protections should be of existing legal rights and not expand beyond them; and it is concerned that a notice and takedown regime, while possibly appropriate for websites engaged in criminal activity, could well deprive domainers of due process rights in other instances.”””

From a personal point of view, as someone who has fought over 10 UDRP’s, and won them all, only to have to fork over $5K a pop to defend them, the loser pays UDRP’s proposal is somewhat attractive as it  would help fend off the rididulous cases by “amateurs”, however it would greatly increase the number of “major” trademark holder actions.  Most major trademark holders would just skip the C & D letter and go right away and file a UDRP.  Legal fees for major trademark holders law firms, located in NY or Washington are going to charge, especially if they know their client isn’t paying the bill, $10K-$50K per action.

In addition to legal fees, you have the filing fee that the complainant now pays of $1,500, another $1,500 if a three member panel is requested.  Therefore a loser of a UDRP could face tens of thousands of dollars in fees and costs, per domain.

Now we all have seen terrible decisions where someone with really no right to a domain, winds up with it through a UDRP.  Do you really want to put yourself in a situation where you would not only lose a domain, but have to pay tens of thousands of dollars on top of it?  Would just one of these bad experience lead you to give up any action filed against you immediately?  Could you afford to lose 2 or 3 of these a year?

So to wrap it up it is clear, especially after yesterdays second draft report (if you didn’t read this yesterday, do it now), that the new gTLD process will have a great effect on all existing TLD’s and the right of current domains holders in the .com, .net and .org space.

ICANN is still permitting in this draft, differential pricing for all domains, with no price caps on domain registrations/renewals.

As Jeff Neuman President of NeuStar, owner of the .biz registry, commented on our blog last night, if the new gTLD registries are given the right to have differential pricing, so should existing registries.

Mr. Neuman is right.

What is allowed for one should be allowed for all.

While Mr. Neuman, also stated “NeuStar believes it is reasonable to have price caps on renewals and that should apply for all registries”, if ICANN allows the new TLD’s registries to operate without price caps, it is only fair that  VeriSign for .com and .net, PIR for .org’s and NeuStar for .biz, operate without price caps.

Think of your most valuable domain.

Think of the domain you spent the most to acquire in a drop auction, domain show auction or private sale.

Now what would VeriSign charge you a year to renew that domain if they could charge whatever they wanted?

$1,000 a year, $5,000 a year, $25,000 a year, $100,000, $1,000,000

Can you afford it?

Can you afford it on 10 domains, on 100, on 1,000.

Get involved in this guys.

Now

You need to throw The ICA a few bucks, become a member show support not just financially but by adding to the membership ranks of the ICA.  It’s a lot more helpful for Mr. Corwin to say he represents a group of 1,000 than a group of 100.

This is not just the big boys problem, its every domain holders problem.