This is a guest post by Tom Barrett who is the founder of EnCirca, an ICANN Registrar, and TM.Biz, a brand protection platform and TM.Biz provided trademark validation services for the .XXX and .PW TLD’s and will be offering pre-validation services for users of the Trademark Clearinghouse.
We do have comments at the end of the piece but Tom’s post is unedited:
“Under the guise of implementation, ICANN has announced that Trademark Claims will be expanded to include confusingly similar strings of trademarks that have been subject to a successful UDRP.
The Trademark Clearinghouse is launching on March 26. It is intended to be a repository of validated trademarks for primarily two brand protection mechanisms:
1. Trademark Claims
2. Eligibility for Sunrise Periods
After years of debate by cross-constituency working groups within ICANN, a consensus was reached that only exact matches of trademarks would be protected by Trademark Claims and Sunrise registrations.
The trademark industry has long objected to this narrow definition since it excluded common misspellings of trademarks that were often used for so-called typosquatting. So, even after the numerous working groups and the Applicant Guidebook limited protection to exact matches only, trademark owners have continued to lobby for a more expansive protection beyond exact matches.
In a move that is creating a backlash within policy-making and working groups such as ICANN’s GNSO and Accountability & Transparency Review Team, ICANN this week decided to expand trademark protection beyond exact matches, at least for the Trademark Claims service (but not for Sunrise).
The Trademark Claim service is a message displayed to potential registrants that the domain name they are considering for registration matches a trademark that is been filed in the Trademark Clearinghouse. If the domain name is then registered, the trademark owner(s) are then notified of the event. The new rule covers up to 50 confusing similar strings that were subject to a successful UDRP or court order.
Trademark owners did not get everything they wanted here. This change does not expand the eligibility of possible strings a trademark owner may register during a Sunrise Period. While the UDRP has proven to be a boon for trademark owners in stopping trademark infringement in domain names, critics of the UDRP counter with observations that: A successful UDRP is by no means proof that any infringement actually occurred; UDRP decisions do not always consider how the domain is being used, if at all; Defaults are common, where the registrant often does not respond; and there are many cases of over-reach by trademark owners that panelists fail to reject
In terms of the effort to implement this change, it is minimal. The primary impact will be felt by the trademark clearinghouse. Presumably, trademark owners will need to provide copies of the UDRP or court decisions in order to prove they are eligible for protection for these new strings.
Is this creating new rights for trademark owners?
Some advocates would argue that this expansion merely reflects the results of actual disputes and doesn’t prevent the registration of any domain name by anyone in good faith. Others are saying this is an expansion of rights for trademark owners and expands the mandate of the TMCH beyond exact matches.
What are the ramifications for UDRP or URS?
The UDRP and URS already include confusingly similar strings for consideration. Presumably, any UDRP or URS on a domain that triggered a trademark claims notice would mention that the registrant had a chance to cancel their registration and went ahead anyway after being informed of the trademark claim. What is unknown is how the existence of a trademark claim notice delivered to a registrant would affect a trademark owner’s success for the UDRP or URS.
Should the claims notice to the registrant be adjusted to reflect that the claim is based on a UDRP?
The basis of a trademark claim can now vary according to whether: it is an exact match, as determined by the TMCH, or a string that was subject to a UDRP. Should this be communicated to the Registrant in any way? Should there now be two different claims notices based on the source of the underlying trademark claim?
Is this a positive change? Does it support or harm potential registrants? What will be the impact for the future of new TLD’s?
I’ve always been a believer that a significant percentage of so-called cybersquatting is unintentional. In these cases, education is a good thing. The consumer should understand whether their intended use might be construed as infringing someone’s trademark.
But is this how we want ICANN to make decisions?
ICANN is claiming this is implementation of the policies developed by various working groups. But the agreed-upon policy clearly says that only exact matches will be covered. So, to call this “simply implementation” is a stretch.
What do you think?
Is this policy or implementation? Does it matter?
Do the ends justify the means?””
So to answer Tom’s question, we think not.
The operative sentence in Tom’s post is our opinion was:
“After years of debate by cross-constituency working groups within ICANN, a consensus was reached that only exact matches of trademarks would be protected by Trademark Claims and Sunrise registrations.””
Correct
ICANN debated his issue for as Tom says literally for years yet with one unilateral action this week the CEO of ICANN decided to change it
We urge everyone to read Phil Corwin’s piece on the subject.
We thank Tom for bringing his opinion to thedomains.com
This is an absurd overreach by ICANN.
There have been many awful UDRP decisions that have been reached.
Winning a UDRP is just the finding by 1-3 panelists for 1 specific case. That is as far as it should go.
The vast majority of the time there is no response. Just assigning TM rights based on a prima facie case that won a UDRP decision is ridiculous.
UDRP is a kangaroo court. You can have split decisions for the exact same terms like uHealth.com / uHealth.org, or loses for obvious generic terms like Vanity.com.
If ICANN continues down this path I expect the Department of Commerce, or other government regulatory agencies to get involved. ICANN is not operating in the multi-stakeholder model that was designed.
Such unilateral BS by ICANN should not be allowed to fly.
Brad
There are a number of fundamental errors in both Tom’s and Phil’s comments. A warning that they’re playing loose with the facts and standards is the use of “so-called” before any term.
I’ll address only one of the remaining errors: Yes, in a large number of cases the registrants of challenged domain names fail to respond to UDRP Complaints. However, there is no such thing as a UDRP win by “Default”. Even if the registrant fails to respond, the Complainant must meet all the requirements of proving its case: i.e. that it has rights in the string at issue, that the registrant does not have rights in the string, that the string is confusingly similar to the asserted trademark or term, and that the registrant registered and used the domain name in bad faith. It is not as simple as an award if the registrant does not respond.
@mchaelgraham — I take very strong exception to your allegation that my comments (I presume that you are refering to the opinion piece I posted at the ICA website, that Mike has linked to) has “fundamental errors” and plays “fast and loose with the facts” — and I don’t use the “so-called” modifier.
My article is quite extensively documented, with links to the ICANN documents cited. ICANN is on recent record stating that expansion of the TMC database would be creating rights rather than defending them; that such expansion was a policy matter requiring GNSO feedback; and then the GNSO advised ICANN that a majority believed it was a serious policy matter that required continued discussion. Depsite all that ICANN staff and management, with no Board involvement, ignored the GNSO feedback and made a unilateral decision to expand the TMC database. You may think that the end justifies the means, but the means raise serious procedural questions for everyone involced with ICANN or affected by its actions.
I would suggest that you either be specific in your allegations (in which event we can continue the dialogue) or concede that you made a fundamental error and withdraw them in regard to me.