On April 19, 2013 ICANN’s Non-Commercial Stakeholders Group (NCSG) filed a formal Request for Reconsideration with ICANN’s Board Governance Committee to review a unilateral staff decision to expand the scope of the Trademark Clearinghouse (TMC) claims service for new gTLDs. That decision would allow trademark owners to include up to 50 additional typographical variations of each accepted trademark in the TMC database (letter at www.icann.org/en/groups/board/governance/reconsideration/request-gross-19apr13-en.pdf).
The claims service serves two purposes – conferring the ability for trademark owners to participate in an advance sunrise registration period at each new gTLD, and generating automated warning letters to potential registrants that a domain they are seeking to generate was a registered trademark – or, under the adopted 50-plus rule, had been the subject of a prior UDRP or judicial enforcement action. That latter aspect is particularly worrisome because, as NCSG Chair Robin Gross explained in a related article:
Under staff’s plan, large trademark holders that register in the clearinghouse will be provided thousands of derivations of their trademarks since each separate country’s registration of the same trademark provides the brand owner with an additional 50 entries in the TMCH.(Emphasis added) www.circleid.com/posts/20130501_icann_board_asked_to_review_decision_to_expand_trademark_rights/
That means that the potential registrant of an intended website at one of the 1400 new gTLDs, seeking to use a domain name having no trademark protection and with no intent to infringe, might nonetheless receive a warning of potential infringement – a warning that might later be cited as evidence of bad faith registration by an aggressive trademark owner in a UDRP or URS filing. This would constitute an unjustified expansion of trademark rights – which ICANN stated as the basis for its prior position that it lacked the power to adopt such a policy – and would undoubtedly halt many perfectly valid domain registrations from ever taking place at new gTLDs. It’s not even clear whether a potential registrant receiving the warning would be told if the intended domain was an actual trademark or just a typo.
Ms. Gross’ article cites a March 22nd ICA posting in which we recounted the history of this issue – including repeated ICANN statements that such expansion was beyond its powers and raised policy matters that must be addressed by the GNSO Council rather than staff – and we observed “that it is difficult to justify adoption of a mechanism that flies in the face of ICANN’s own prior statements, that was identified as a policy matter deserving further community input by the policymaking body responsible for gTLDs, and that raises profound issues for the operation of new gTLDs as they approach launch as well as for Internet free speech….It’s all fine and good to tout the bottom-up, multi-stakeholder process when ICANN is under siege, but it would seem appropriate for it to actually be observed when it counts on important policy issues rather than witness top-down decision-making.” (internetcommerce.org/ICANN_Amnesia)
As for what happens now that the request for reconsideration has been filed, Ms. Gross’ article explains:
ICANN’s Board Governance Committee has thirty days in which to make to a recommendation to ICANN’s Board of Directors regarding the NCSG’s Request for Reconsideration or report to the Board on why no final recommendation is available and provide a timeframe for making a final recommendation on the matter. ICANN’s entire Board should consider the recommendation of the Board Governance Committee at its next regularly-scheduled Board meeting…NCSG requests that the Board reinstate the community-developed policy of giving trademark holders rights to include exact matches of their trademark only in the TMCH, which was the policy stated in ICANN’s Applicant Guidebook when ICANN accepted applications for new domains.
ICA commends the NCSG for filing this important request that ICANN observe proper decision-making procedures. We fervently hope that the Board Governance Committee will take the request seriously and recommend that the full Board reverse this unwarranted staff decision. On both procedural and substantive grounds, it is clearly the correct call to return this matter to the full GNSO Council and let it perform its policymaking role. This is a decision for stakeholders, not staff.