New Top Level Internet Domains – To Be Or Not To Be?Published on 6 June 2009 @ 9:57 am
By Monika Ermert for Intellectual Property Watch
Now even trademark owners and large businesses do not really agree on the planned extension of the internet domain name system to include hundreds of new top-level domains (TLDs) like .com.
The Implementation Recommendation Team (IRT) set up by the IP Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN, the internet’s technical oversight body) has filed its final report on trademark protection in the extended DNS and had to accept criticism from all sides, including big brand owners.
“If I am bakery Otto [a generic reference], I am losing in this,” said a representative of a small company at a late May brand.TLD Roadshow in Frankfurt, Germany. Community applications under current rules might lose against speculators, warned consultants from Mind + Machines.
“We are keenly aware that you cannot please all of the people all of the time, but we hope that readers of our report will consider the benefits of our efforts, which we believe will accrue to all branches of the ICANN family,” wrote the 18 IRT members in a resigned-tone prescript to their final report. “After all, in attempting to craft a tapestry of interlinked recommendations that we believe are fair to everyone, it might be that we end up pleasing no one?”
The report is now open for comments on the ICANN website for another four weeks.
ICANN previously asked rights holders to come up with possible solutions to their concerns (IPW, Information and Communications Technology/Broadcasting, 12 March 2009).
While admonishing existing “malicious behaviours like spamming and phishing” and warning that “lurking in the darkest corners of cyberspace are the unscrupulous, the dishonest and the dangerous who prey on the unwary,” the report sticks to its original draft recommendations with some fine-tuning.
The core idea of the group is the set-up of an “IP-Clearinghouse” where information on IP rights could be registered for a fee by trademark owners. Trademark owners and registries could then use services like a TLD pre-launch IP claims list or an “IP watchlist” that would inform the trademark owner about every potential TLD-registration using his mark in some form.
With regard to a Global Marks Protection List (GMPL) that would offer high protection at both the top-level (like .ford) and the second-level (ford.car) in the new TLD space, the IRT withdrew concrete proposals on the criteria that would allow marks to be added to the list.
In its draft version, the IRT had set the barrier high by requesting a trademark owner have at least 200 trademarks registered in 90 countries, all marks registered before 1 November 2008, and at least 50 second-level domain name registrations in 50 TLDs in order to be on the GMPL and receive higher protection.
Very few trademarks would make it to that list, said Dirk Krischenowski, founder of dotberlin, aspirant for a the .berlin TLD, and dotzon, a consultant for new TLD applicants. The decision by the IRT not to recommend “a single all-encompassing Trademark Reserved Names List as a universal protective mechanism” was criticised heavily by some trademark owners.
Auto Companies Put on Brakes
A group of automobile companies including Volkswagen and Ford rejected the IRT draft report, warning that while the all-encompassing trademark list might be over-inclusive, the GMPL would be under-inclusive.
“In the absence of any ground for finding a public interest in the expansive availability of ‘.trademark’ domains [such as .ford], ICANN should adopt an ‘all-encompassing’ list that protects trademark holder and consumers,” the car companies said.
A global rejection of the trademark TLD is a “far superior answer than the granular solutions of the IRT,” VW and Ford wrote to the IRT. Nothing could be gained, they wrote, as second level domains controlled by trademark owners already do the job.
Yet Krischenowski and other experts think that .brand TLDs will replace brand.tld (second-level TLDs) in the years to come. Even with car manufacturers they see differences with regard to the strategies taken, with some car manufacturers possibly interested in offering each customer a website dedicated to his own car according to a serial number, for example, 328765.cartrademark. Trademark owner strategies seem not to be cast in stone yet: Toyota, for example, first partnered with VW and Ford only to withdraw its signature later.
While trademark owners try to come to grips with the question of whether they might win or lose with new top-level domains, experts already warn that smaller companies and community applications are disadvantaged by the application process.
Mind + Matters said in its intervention during the IRT comment period that more open community applications like .golf, .women, .islam or .gay would lose the race against deep-pocketed speculators because of the scoring system in the current planned ICANN TLD application procedure. Because broader communities want to be open for every member they would be declared open TLD applications – contrary to company TLDs – and thrown into auctions, cautioned Mind + Matters.
“I think new TLDs should be ‘shared TLDs’. They should not serve only one party,” said Werner Staub, secretary of the registry provider CORE.
Shared TLDs could be corporate TLDs, he said, for example, services might be offered under a TLD like .skype. Single company domains without such services on the other hand would not really serve the public interest and might only create a land rush in the DNS root because everyone would be afraid not to register his trademark as a TLD.
“In the long term only speculators can win in this,” Staub said. For smaller community applications like .gal (Galicia), .scot (Scotland) or .cym (Wales), on the other hand, the high application fees would be painful.
IRT Report Open for More Comments
The IRT report is again open for public comment to the ICANN board, which has to decide how to go forward with the proposals for an IP Clearing House, a uniform rapid suspension system (URS), post-delegation dispute mechanisms, and the use of an algorithm in string confusion review during initial evaluation.
With regard to the Whois system of website owner contact information, ICANN staff reacted to public comments by announcing that it would pursue a so-called thick Whois model. This means that data on domain registrants have been centrally stored with the registry instead of being split between local registrar and central registry.
From the point of view of data protection experts, the thin whois offered the possibility to adapt publishing of the domain name registrants’ data to local law. A thick registry model, on the other hand, means that registrants would be obliged to comply with the law that applies to the respective TLD registry. The IRT even asked for a central Whois database managed by ICANN.
With the trademark questions still under discussion, experts already expect another delay for the new TLD application process. ICANN just announced that “the programme is expected to launch (i.e., applications will be accepted) in the first quarter of 2010, but we will not open the process until concerns about the overarching issues have been addressed.”
Public consultations on what are labelled as overarching issues focusing on trademark protection and the potential for abusive conduct will take place at the ICANN meeting in Sydney, London, New York, Hong Kong and Abu Dhabi in the coming weeks.
In addition, there are still discussions about the limits for geographic TLDs with governments and this could prove, according to observers, another roadblock on the stony way to new generic TLDs.
Monika Ermert may be reached at email@example.com.
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