Trademark rights protection discussions slip through the ICANN/GAC 2011 Brussels conference and into the March 17 San Francisco GAC consultation

The Brussels ICANN Board and Government Advisory Committee (GAC) meeting, scheduled to be an unprecedented consultation on trademark protection and new gTLDs, did not have the success hoped for.

Firstly, not only was the Board unable to make its way to preliminary responses for all of the twelve categories of items listed in the GAC’s scorecard distilling the key elements of consensus advice regarding the introduction of new gTLDs (see previous article on the Cartagena conference for a list of these categories of items), but according to the Board, its response to the first four issues should not be assumed to be its final positions.

Secondly, after a brief and unsuccessful discussion on trademark owner rights protections, the entire subject was simply taken off the table; indeed, it was decided that the GAC and the Board would hold conference calls over the rest of the week and dig back into the subject at the Board’s GAC consultation scheduled for March 17 in San Francisco.

The Board did, however, reveal some of the proposed changes it will make with respect to right protections, based on the GAC’s recommendations.

As to the Trademark Clearinghouse, the Board accepted to change the requirement that trademarks be substantially reviewed to gain automatic entry to the Clearinghouse; all registrations will be included with the additional requirement that the mark holder be able to show use. As to the GAC’s wish to keep the Clearinghouse open after the launch, the Board was not keen on the idea but expressed its intention to explore mechanisms for continued notice service.

Concerning the Uniform Rapid Suspension (URS) procedure, the Board stated that efforts were under way to increase the speed of the process and that such efforts would be dependent on the scheduled conference calls and accepted to reduce the word limit for filings (from 5,000 word free text and unlimited attachments to 500 word free text and attachments limited to copies of the offending website). It also accepted that successful complainants have the option of taking ownership of the domain rather than having the domain name released back into the market. The Board however refused to introduce, at this stage, a loser-pays process, but agreed to provide for careful monitoring.

Finally, as to the Post-delegation dispute mechanism, through which trademark owners can proceed against registry operators acting in bad faith, with the intent to profit from the systematic registration of infringing domain names, the Board resisted to the GAC’s recommendation that a lower standard of proof be applied (from “clear and convincing evidence” to “preponderance of evidence”). It also disagreed with the suggestion that should a registry be found to encourage cybersquatting, transfer of all the domain names in question should be part of the remedies sought.

Further developments in March 2011; however, the gTLD application launch date seems further delayed. To be continued …