Internet IP: US may demand more trade mark protection in gTLDs

26 January 2012

The most senior politician in the US government agency that gives Icann power over delegating new gTLDs said he may push for more trade mark protection measures in April 2012. Lawrence Strickling, assistant secretary at the National Telecommunications and Information Administration (NTIA), wrote to Icann in January to express his concerns about brands being unaware of existing protection measures.

Strickling said Icann must minimise the perceived need among trade mark holders to register defensively at the top level – before the application window closes. He said brand owners had not fully appreciated how they can avoid filing costly defensive registrations.

And he said that the NTIA, working with stakeholders and other government representatives in the GAC, would evaluate whether more trade mark measures were required at the second-level.

Successful gTLD applicants can offer additional protection mechanisms to those in the Applicant Guidebook, such as the Trademark Clearinghouse, but additional measures are not mandatory.

The NTIA assistant secretary also said Icann may have to "phase in" new gTLDs once it becomes clear in April how many gTLDs have been applied for.

Revealed: The cost of insuring against gTLD failure. Generic TLD applicants will need a maximum of $300,000 to support their registry for three years if it were to fail, according to Icann. Applicants must submit a continued operations instrument, showing that there would be sufficient funds available for an emergency operator to run the failed registry. Some brand owners would only need the minimum $18,000.

O2 loses porn domain dispute. A UDRP panellist rejected O2's attempts to seize a pornographic domain containing its trade mark, but awarded it a second adult domain which was "extremely damaging" to its business. In O2 Holdings v Flashfire Marketing, John Katz QC refused O2 the site 02sexy.com because O2 registered its mark three years after the disputed domain. Katz also said O2 provided insufficient evidence.

Icann decides how to manage gTLD batches. Icann will use a "secondary time stamp" system to manage batches of gTLD applications next year because a random selection system would breach California gambling laws. Directors decided in December to adopt the time stamp but must decide how the mechanism will work. Icann can only manage 500 applications at once, but as 1,000 applications are expected there must be a mechanism to fairly create two or more batches.

ICM takes down "blatant" .xxx cybersquatters. ICM Registry targeted "blatant and undeniable" cybersquatters in December, suspending 50 to 70 .xxx domains without using arbitration. ICM seized domains such as washingtonpost.xxx and cnbc.xxx because the alleged cybersquatters breached their registry-registrant agreement. Registries normally use dispute resolution mechanisms to resolve cybersquatting cases.

Icann expects the Trademark Clearinghouse for new gTLDs to be ready in October this year – before the first strings go live in early 2013 – giving trade mark owners several months to file their marks into the central database.

The official London promotional agency, London & Partners, which will apply for a .london gTLD, said it will choose its registry operator in February.

Cable companies Ziggo and XS4ALL have been ordered to block access to The Pirate Bay – which hosts illegal copies of music, films and games – or face a €250,000 fine.

Icann has named two vice presidents: Nigel Hickson, who is a former British civil servant, will lead the European office, and in Latin America, Mexican Rodrigo de la Parra will take charge.

The public comment period on the Preliminary GNSO Issue Report on the Registrar Accreditation Agreement Amendments – which summarises proposed changes to the contract between Icann and registrars – closed in January.

Icann released an updated Applicant Guidebook on January 12, explaining changes for politicians who want to block applications and outlining support for disadvantaged applicants.