Trademark issues are emerging with the upcoming introduction of new generic top-level domains on the internet, and the board members of the body introducing the names has passed the ball back to intellectual property experts to find answers.

The Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN, the internet technical coordinating body) has been asked to work out a viable solution “no later than 24 May 2009.” Trademark issues have been defined as one of four overarching issues still to be solved before ICANN can finalise the application procedure for the next hundreds or thousands of top-level domains from .eco to .music.

In its resolution on Friday in Mexico City, the ICANN board decided to request that the ICANN Generic Name Supporting Organization (GNSO) Intellectual Property Constituency – in consultation with ICANN staff – convene an “implementation recommendation team” comprised of an “internationally diverse group of persons with knowledge, expertise, and experience in the fields of trademark, consumer protection, or competition law, and the interplay of trademarks and the domain name system.” The team is to “develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs.”

“We have reached out to the IP community saying, ‘You come back to us with some proposal how this should be solved,’” said ICANN Board Chairman Peter Dengate Thrush. An IP lawyer by profession, Dengate Thrush said he was confident that a proposal would be brought back to ICANN because of the “track record” of the IP experts. “We have gone through this already once in 1998/99,” he said. The debates 10 years ago resulted in the formation of the Uniform Domain-Name Dispute-Resolution Policy (UDRP), built into the system to fight domain grabbing. Many domain-name disputes under the UDRP are brought to the World Intellectual Property Organization, which is expected to release its annual report on internet disputes next week.

The danger of name-grabbing at the first stage and the concern that trademark owners will be pressured to protect their brands in hundreds of new TLDs led to a flurry of critical comments during the comment period last year for the first version of the Applicant’s Guidebook to the new domains. Even the US government called into question the need for new gTLDs asking for studies on the issue of market demand and market impact.

ICANN recently published “preliminary” versions of studies prepared by Dennis Carlton, economics professor at the University of Chicago and highest-ranking economist in the Antitrust Division of the US Justice Department between 2006 and 2008. The draft texts came under heavy critique from participants at the ICANN meeting in Mexico.

After ICANN’s decision on the implementation recommendation team there are some concerns with regard to the composition of group by outside observers. Board member Dennis Jennings of Ireland said he was glad that the resolution taken included internationality as a principle for the group. The discussion about IP issues seemed to have been “driven by big business and West, or North American intellectual property interests,” he said, adding that “other dimensions that need to be taken into account.”

Wendy Seltzer, non-voting liaison of the At-Large Advisory Committee on the board said she hoped that members of other communities would be “consulted early in the process and would have full opportunities to analyse proposals that come out of this working group.”

“All interested constituencies will have the opportunity to provide input to the group,” wrote Kristina Rosette, an IP lawyer at Covington & Burling who represents the IP Constituency in the GNSO. This means the opportunity to provide input before drafting starts and during the early stages as well as the opportunity to comment on the draft, she said in a written statement to Intellectual Property Watch.

“It may also mean membership on the team,” Rosette added. “To my knowledge, that aspect has not been decided nor has the size of the team.” But she would expect that the group could be established in the next 10 days. Rosette also said she was confident that the IP Constituency could ultimately present a solution acceptable to other constituencies.

Members of other constituencies in first reactions were worried that the IP Constituency would start over and neglect the policy development process that has taken place over years on the new gTLD introduction. They complain that the constituency has taken part in it and now is given a privileged chance to push their interests.

“We need a solution,” Dengate Thrush said of the trademark issue. If the report is not acceptable to other constituencies in ICANN, “we will start our own work for a solution,” he said.

Government Involvement

The chairman of the ICANN Government Advisory Committee (GAC), Janis Karklins, welcomed the steps taken to ensure IP protection but criticised a proposal that geographic names be given the same level of protection rather than higher protection.

So far GAC advice on the protection of country and place names has not been “fully taken into account,” Karklins said, as ICANN provided protection for the top level but not the second level of the upcoming new gTLDs. The second level would be in the form of @name.othername.

Dengate Thrush reacted to this by saying that there might be a need for the GAC to reconsider parts of its advice, “partly because they’re difficult to implement and partly because they’re in conflict with other policy decisions.”

Dengate Thrush also confirmed that as details of the different processes of introducing new gTLDs and new internationalised country-code top-level domains (IDN ccTLDs) becoming much clearer, the possibility for different start times for each set of names would become more real.

Dengate Thrush asked, “Now that the possibility of divergence is becoming more real, what is the policy behind that?” and called for discussion on the question at the next ICANN meeting to be held in Sydney on 21-26 June.