Intellectual Property Owners Association’s President Richard Phillips sent an official letter to ICANN demanding better protection of trade marks in the implementation of the new domains.
The demands primarily relate to limiting excessive, according to the head of the IPO, rights of domain registries in administration of second-level domains. The subject of the controversy are the names that have been submitted to the Trademark Clearinghouse maintaining the trademark database for ICANN. Phillips insists that domain extension registries should not reserve the domain names put forward as brand names at their discretion or, at least, that such reservations should be subject to UDRP (Uniform Domain-Name Dispute-Resolution Policy) proceedings.
Brands in Danger
Phillips expressed his concern that the rights granted to top-level domain operators under contract with ICANN may violate the rights of holders of registered trade marks, pointing to the Sections 3.2 and 3.3 of the contract as the source of the problem. As follows from Section 3.2, the domain registry operators can activate up to 100 domain names within the TLD necessary to support the promotion of the domain extension and it is only at their discretion to decide whether any of these domains will be made available for registration by another person or entity. In turn, Section 3.3 states that domain extension operators may suspend the registration or retain the exclusive right to register any number of names at all levels within the domain. At the same time, the registry can transfer a given reserved domain name that has not yet been activated within the DNS (Domain Name System) to a selected entity or a natural person. According to Phillips, such authority can lead to abuse which may harm holders of protected trademarks. There exists a risk, for example, that domain registries may make the reserved domain names available to entities competitive with those who have the rights of ownership to the trade mark.
Therefore, IPO demands that ICANN extend the controlling competencies of the Trademark Clearinghouse and adopt the UDRP procedures for domain name reservation and transfers – a practice utilising analogous legal tools that relate to registration of second-level domains. Phillips proposes the implementation of the following measures:
- If the registry wants to register, reserve or transfer to others a domain name, the domain name should first be verified in the Trademark Clearinghouse database. If the name appears in the database, the registry should be informed of that fact.
- If, despite the above, the registry decides to register, reserve or transfer the name to other entities, the owner of the corresponding trademark should be made aware of this fact.
- If the registry decides to register, reserve or transfer to other entities the domain name that is identical or that bears close resemblance to the registered trade mark, the trademark owner should be able to take advantage of a procedure analogous to the UDRP.
In their requests, IPO allows for some modification in relation to the UDRP. It refers to the situation in which the top-level domain is clearly linked to the dictionary meaning of the second-level domain. The registry then would have to clearly demonstrate such a link, and thus be exonerated from suspicion of a trademark violation. Phillips does not specifically define such a link but it can be inferred that it may refer to domain hacks, for which the use of new domains offers a huge potential.
An attempt to appropriate the names?
IPO is a trade association that brings together more than 200 companies from various areas of industry and technology as well as 12,000 individuals, mostly lawyers representing companies directly or through law offices. Lobbying for strict trademark protection within the new domain programme is not surprising, given the high activity of associations related to intellectual property rights in the US. However, it raises understandable discontent on the part of market participants, including investors as well numerous regular Internet users. The subject of their criticism is companies’ attempts to appropriate terms that potentially, or practically, can have a much wider application than that determined by a specific entity.