Trademark Holders Demand Flesh and Blood on New gTLDs

By September 23, 2010 Governance No Comments

Trademark representatives never give up. They are like a dog with a bone, and the only time they are silent is if they have their way 100 per cent.

Originally decrying ICANN’s proposal of new gTLDs as the end of the world, the International Trademark Association (INTA) seems to now accept they will happen. But INTA continues to wrestle with the gTLD bone in ensuring that when they are introduced, they have their way with trademark protection.

The latest salvo from INTA is a letter to Peter Dengate Thrush and Rod Beckstrom, ICANN’s chair and CEO/president respectively, saying they support “ICANN’s identification of trademark protection and an analysis of economic impact as two of the overarching issues that must be resolved before any new gTLDs are introduced.”

INTA believes “the resolution of these overarching issues is central to the objective of ensuring consumers are adequately protected and registrants and internet users are not disparately impacted by the introduction of new gTLDs.”

The letter goes on to say INTA “applaud[s] the recommendation set forth in ICANN’s recently commissioned economic report, ‘An Economic Framework for the Analysis of the Expansion of Generic Top-Level Domain Names,’ to conduct a study to assess the harms associated with intellectual property abuse and related forms of consumer fraud in the domain name system, including how the current gTLDs have affected intellectual property and consumers since their introduction. Indeed trademark owners believe that such a study is not only a sensible recommendation, but an essential prerequisite before any rollout of new gTLDs.”

INTA kindly offers to assist ICANN “with the preparation and completion of such a study”. No doubt it never occurred to them that they would like to ensure their views were taken into account!

However ICANN seem to be saying that the IP lawyers have had their say, with Dengate Thrush saying at the recent Internet Governance Forum in Vilnius that they:
have had their chance to make all of their cases in their five-year process and the intellectual property protection brought in place is with a delicate balance with everyone in the community not just with IP lawyers IP lawyers always want more protection IP lawyers always want their brands to be stronger I’m one myself I’m a specialist IP lawyer. What we have had to do is balance the interest of the IP lawyers against all of the other constituencies free speech if you don’t want these things people who say that each of the brands in TLDs do not equate to brands that there are other elements and other values. So there’s a lot of debate that’s gone into this it’s not just simply somebody saying: Let’s do it over. Let’s do everything in a hurry it’s taken five years and resolved with a lot of compromised discussions of which the IP lawyers have been a huge part so just some comments from me.

The letter to ICANN from Heather Steinmeyer, President of the International Trademark Association is on the ICANN website at:
icann.org/correspondence/steinmeyer-to-dengate-thrush-08sep10-en.pdf

The transcript of the “NewgGTLDs and IDNs for Development Importance and Obstacles” session at the IGF in Vilnius is available from:
www.intgovforum.org/cms/component/content/article/102-transcripts2010/634-61