INTA ON ICANN
partners. Te influence of these contracted business partners (upon which ICANN’s budget is based, collected through fees imposed on domain name registrants) is disproportionate to the interests of the public at large. As a result of these imbalances, IP concerns are all too oſten minimised in policy outcomes.
they are considered ‘high risk’ strings given that they occur an order of magnitude more oſten than other strings.
However, ICANN is also reporting an ‘uncalculated risk’ identified for 20 percent of the applied-for strings. Additionally, several of the potentially at-risk strings include well-known trademarks. ICANN’s proposal to mitigate name collision risks remains open for public comment until September 17, 2013.
With the launch of branded new gTLDs there are more opportunities for the trademark community to participate within ICANN. Tese new gTLD applicants have made significant investments in acquiring .brand gTLDs, and also share the consumer protection concerns common
to the entire INTA community.
However, ICANN has been reluctant to address the issue that trademark owners who have applied for a .brand gTLD require a separate registry agreement because of the unique operation of a ‘single registrant registry’—a registry that is restricted to only affiliates of the brand owner registry operator.
While progress is being made with respect to certain portions of the registry agreement that can be amended to reflect this reality, it remains unclear if ICANN can accommodate the contractual requirements that established brand owners need to operate TLDs.
Governance, costs and hope
All this activity is occurring against the backdrop of an ICANN governance structure that lacks the full representation of the public interest and is tilted towards its own contractual business
www.worldipreview.com
Risks caused by the new gTLD expansion are on the horizon. But there is still hope that the system will continue to benefit consumers. As described by ICANN’s economic studies, consumer choice may be enhanced, provided ICANN properly manages the scope and scale of new gTLD programme with appropriate safeguards. One of the most visible potential benefits may come in the form of internationalised domain names, or TLDs based in non-Latin scripts, and .brand domain spaces which may serve to increase consumer trust and offer innovative online experiences.
INTA will continue to work on promoting the public interest in the introduction of new gTLDs. Upcoming INTA initiatives, including publications, educational programmes, and the development of a TLD policy database portal, will help trademark owners manage the exponential growth of new gTLDs.
Unlike the name collision issue, which is an engineering problem related to the use of an applied-for new gTLD term that may also be used in private networks, there has been no study by ICANN of ‘brand collisions’ within the new gTLD framework. If ICANN has run clearance searches on the applied-for strings to determine whether consumer confusion might occur if the string were operated by someone other than a party that owns an underlying trademark that corresponds to the gTLD string, the results of such searches have not been made public. ICANN has done little empirical research on trademark protection and consumer confusion in the domain name system.
None of this bodes well for the trademark owners' budget in light of new gTLDs. Even ICANN’s own limited research demonstrates that
the external costs likely to be imposed
by new gTLDs will be significant with regard to monitoring, defensive registrations, and enforcement actions. Although the technical risks such as name collisions have been identified, it is only at this late stage that potential mitigation
measures are being
proposed. Last, ICANN’s decisions in allowing certain strings to co-exist, and decisions in legal rights objections, may further increase the likelihood of consumer confusion.
John McElwaine is chair of INTA’s new gTLD subcommittee. He is a member of the IPC where he serves as the 2014 appointee to the nominating committee of the ICANN board.
So how can trademark owners help improve ICANN’s implementation of the new gTLD programme? Participation in ICANN’s IPC is a good place to start. ICANN’s last public meeting of 2013 will take place in Buenos Aires, Argentina, November 17 to 21. Trademark owners also can reach out to INTA for suggestions on how to connect with and participate within the ICANN policy development process during these important times.
John McElwaine is a partner at Nelson, Mullins Riley & Scarborough LLP. He can be contacted at
john.mcelwaine@
nelsonmullins.com
Paul McGrady is a partner at Winston & Strawn LLP. He can be contacted at
pmcgrady@winston.com
Paul McGrady is chair of INTA’s internet governance and contractual relations subcommittee. He is an active member of the IPC.
Trademarks Brands and the Internet Volume 2, Issue 3 39
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