The IRT was tasked by the ICANN Board in March this year with suggesting solutions to deal with trade mark problems that might arise from the launch of new gTLDs. These could include conflicts with prior rights in the new gTLDs themselves, as well as the means they use to resolve disputes over IP rights.
On April 24, the IRT published its draft proposals, which included having a centralised database of IP rights, establishing a faster, cheaper version of the UDRP, creating a globally protected trade marks list, making registry operators liable for contributory infringement and having a comprehensive, centralised Whois database.
According to IRT member J Scott Evans, a lawyer with Yahoo!, the final report includes a number of “nuanced changes” based on the comments the Team received, both in written form and at meetings in San Francisco last month.
Evans said that the most significant change from the draft report is to the proposed post-delegation mechanism, which now calls for a more active role on the part of trade mark owners. This change is a result of comments from WIPO.
The IRT calls for “a more active and clearly defined role in any post-delegation dispute mechanism by having the ability to trigger a proceeding against the Registry Operator” and sets out the terms for such proceedings. These require that a complainant pre-pay a fee to ICANN to initiate a complaint and also pre-pay a further filing fee to the dispute resolution provider “should the trademark owner choose to pursue its complaint independent of ICANN”.
Evans said that the Team also received a number of comments regarding the so-called Thick Whois proposal. The term “Whois” refers to the procedure used to determine the owner of a domain name.
As defined by the IRT, a Thick Whois is “the central, registry-level provision of Whois information for all domain names registered within the registry. This model is in contrast to the ‘Thin Whois’ model whereby the registry-level information is very limited and Internet users must rely on the registrar-level for the submission of robust Whois data”.
Evans said that the Team received many comments regarding privacy concerns associated with a Thick Whois, but noted: “We’re not making recommendations about what type of information should be provided, but about how it should be provided and where it sits in the system, which should be at the registry level.”
In a footnote to the Whois section of the report, the IRT said: “[The IRT] notes that the thick registry Whois model has been employed in many new gTLDs for many years without any evidence of legal problems, and also that ICANN, on the unanimous recommendation of the GNSO Council, has established a procedure that can be invoked by any registry that believes it faces a conflict between its contractual Whois obligations and requirements of national privacy laws ... To date, this procedure has never been invoked.”
Other differences from the draft report include a more fleshed out Uniform Rapid Suspension System (URS) – a faster version of the UDRP – and clarification of the IP Clearinghouse model.
IRT member Nick Wood of Com Laude told Managing IP: “We have worked hard in the IRT to propose a tapestry of globally-effective solutions which we believe are fair, technically feasible and affordable.”
The final report is now open for comment and consultation and will be delivered to the ICANN Board of Directors at the ICANN meeting in Sydney this month. Consultations will also be held in London on July 6 and New York on July 9.
Both Wood and Evans encouraged IP owners to attend these consultations and make their voices heard. Wood said that “now is the time to speak up about the scale and cost of domain name abuse and the importance of Rights Protection Mechanisms before they go further with the new gTLD programme”.
Evans emphasised that, while Yahoo!’s position continues to be that ICANN has not yet made an economic case for the expansion, brand owners who do not support new gTLDs should still participate in the comment process.
“If that is their position, brand owners need to qualify their comments to make that clear, but they also need to let ICANN know that they need to be responsible in the expansion [if it does go forward].”
After the Sydney meeting, ICANN is expected to publish a third Guidebook on the new gTLDs, with final decisions on the rollout process due to be made at its meeting in Seoul, Korea in October. If the process is approved, the number of gTLDs could be expanded from the present 21 to several thousand.
In the IRT’s introductory letter to its final report, the Team noted the scale of the online infringement problem by calling attention to the fact that “each one of the five brand owners on the IRT expects to face at least one new domain name infringement somewhere in the world every day of the year”.
