The Looming Expansion of the Domain Name Space, and the Role of Brandholders

Margie Milam, General Counsel, MarkMonitor

It is no surprise that the main focus of ICANN’s November 2-7th meeting in Cairo was the implementation of the new generic Top-Level Domain (gTLD) policy, resulting from years of policy work and the release of the draft Applicant Guidebook. Approximately 1700 attendees traveled to Cairo from all over the globe, many seeking to learn about this significant development in the domain name space. With the public comment period on the Guidebook just having closed this week on December 15th, 2008, many brandholders seized the opportunity to voice their concerns, and to suggest additional protections that could minimize brand abuse with the new gTLDs. We appreciate the numerous companies that endorsed the MarkMonitor letter, and also took the time to file additional comments on the new gTLD process. You can view the MarkMonitor comment here.

This time around, ICANN appears to be more willing to heed the concerns of the IP community. In his opening remarks, ICANN’s President Paul Twomey made the following observations: “We are very aware of the concerns of rights holders … in terms of implementation and thinking through the implementation processes. We have put forward some proposals in consultation with the intellectual property constituency and others in the documentation. We want to hear more practical feedback.”

This recognition may stem from recent comments received by ICANN from the business community in response to its inquiry on How to Improve Institutional Confidence in ICANN. During a public consultation event held by ICANN’s President’s Strategy Committee in Washington D.C. in October, many shared the MarkMonitor viewpoint that institutional confidence in ICANN has deteriorated as a result of the rampant abuse of the domain name system over the last few years, and that such abuse will likely increase if ICANN fails to adopt basic additional safeguards to protect brandholders in the launch of new gTLDs.

This theme was echoed by the Acting Assistant Secretary of the NTIA, Meredith Atwell Baker. In her candid remarks to the ICANN Board of Directors in Cairo, she noted that ICANN faces “a series of very daunting tasks. I say this in the context of ICANN's initiative to improve institutional confidence. I have long thought that a stable and independent ICANN could only emerge and succeed if ICANN enjoys the competence [sic] of the community it serves. Whether ICANN enjoys such confidence is yet to be proven.”

With regard to the launch of new gTLDs, Asst. Secretary Baker opined: “…The Application Guidebook provides useful information to inform this debate. While I am still digesting the extensive material released, an initial review of the Applicant Guidebook reveals several issues that I believe need careful and thoughtful consideration and resolution prior to moving forward. …Expanding the marketplace before having effective and meaningful tools to protect consumers and brand owners. Demonstrating ICANN has sufficient capacity to enforce contract compliance with, as yet, an unknown number of new contracts.”

Secretary Baker’s remarks echo the sentiment of many in the IP community regarding the launch of the new gTLDs, and the perceived failure of registrars to comply with their ICANN contractual obligations. These themes were reflected in some of the comments posted this week, such as the National Association of Manufacturers, the International Anticounterfeiting Association, Time Warner, and Microsoft, to name just a few.

For example, one of these new tools to protect consumers and brand owners may be the creation of a trademark database or clearinghouse for use by the new gTLDs. ICANN appears willing to consider such a new mechanism, based on the following suggestion made by Mr. Twomey in his opening remarks:

“One feedback idea I have heard already … is it might be possible to have a common registry for all rights holders who wish to provide information for sunrise mechanisms. So if we have 100 gTLDs who want to use a sunrise mechanism, a rights holder could record their information in one place once and not have to go through the administrative cost of doing it 100 times. We want to hear other sorts of ideas like this in this consultation process.”

A rights database or clearinghouse could have interesting applications beyond the sunrise periods considered by Mr. Twomey. For example, such a database could be used to create a “reserved name list” of TLDs that could not be applied for at the top level (i.e., .brand) or at the second level (brand.newtld) without additional investigation, or verification of non-infringing use. This database could also be implemented by a registry for notice and take-down purposes, giving brandholders additional remedies beyond the UDRP, if a domain name were to be registered using the registered brand in an infringing manner.

Surely, the launch of new gTLDs presents unique opportunities, as well as challenges to brandholders. We expect some companies to embrace this change as complementary to their existing online marketing initiatives, and to apply for their “house” brand in an effort to control their own “island” on the Internet. For those interested in taking this step, MarkMonitor is prepared to support these initiatives through its new Top-Level Domain Advisory services, designed to help companies evaluate whether a new TLD is right for them.

An Opportunity and a Need for Brandholders to Influence ICANN
Regardless of whether a .brand is in your future, all brandholders should recognize the need to advocate for ways of minimizing brand abuse and to undertake defensive registrations in this looming expansion of the domain name space.

MarkMonitor will continue to represent brandholders throughout the new TLD process and will inform you of opportunities to participate in ICANN. If you have questions regarding the new TLD process or ICANN in general, please feel free to contact me at marketing@markmonitor.com.

Kind regards,
Margie Milam
General Counsel, MarkMonitor

ICANN UPDATE

Registrar Compliance Update

For years, ICANN has been criticized for the failures of registrars to comply with their contractual obligations. However, ICANN has recently stepped up its compliance activities, and continues to add resources to support its compliance efforts, including an Auditor and a Senior Director of Compliance. In November, ICANN sent a notice of termination to EstDomains, Inc. then president, Vladimir Tsastsin based on his credit card fraud, money laundering and document forgery conviction. ICANN also sent notices of breach to Joker.com for its failure to comply with WHOIS obligations, and to Red Register for its failure to comply with UDRP requirements. This is a significant development for brandholders frustrated by the lack of compliance by certain registrars, and further demonstrates that ICANN is taking measures to enforce the contractual terms of its agreements. Brandholders should feel free to reach out to Stacy Burnette, ICANN’s Director of Compliance, with any ongoing complaints regarding registrar compliance issues. For more information, see http://www.icann.org/en/compliance/newsletter/.

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