INTA was one of the 58 organizations to have sent in comments at time of going to press. Other brand owners or associations that have given feedback include MARQUES, WIPO, News Corporation, IBM, Time Warner and Microsoft.
The latest draft has enhanced some protection for trademark owners. The draft Guidebook now says that all new gTLD registries must provide both a Trademark Claims and a Sunrise service. Previously, they could provide either one or the other.
Moreover, registry operators must notify owners of trademarks listed in the Trademark Clearinghouse if someone seeks to register an identical domain during the sunrise period or in the early part of open registration.
The Trademark Clearinghouse will be a list of trademarks, to be managed by an independent organization, and will apply for all new gTLDs.
The latest draft has made it easier for trademarks to be included in the Clearinghouse, regardless of which country they are registered in, by removing the requirement that only marks that had undergone “substantive review” would be recognized during Sunrise services.
But it has added a requirement that the owner of a registered mark (whether substantively examined or not) must provide proof of use to benefit from Sunrise services. That proof can be “a declaration and a single specimen of current use”.
Proof of use must also be shown to make a complaint under uniform rapid suspension (URS) system or the post-delegation dispute resolution procedure (PDDRP).
A Trademark Claims service will also run for at least 60 days after general registrations open. This service obliges gTLD operators to notify owners of trademarks listed in the Trademark Clearinghouse if someone applies to register an identical domain during general registration.
INTA submitted comments in a scorecard format outlining the improvements that it felt could still be made to the Guidebook. INTA agreed with ICANN’s Government Advisory Committee that proof of use should not be a requirement to qualify for sunrise services, and that the protection offered should extend beyond an exact match to the trademark in the Clearinghouse to include variations such as plurals or typographical variants of the mark.
INTA recommended that ICANN proceed with a limited introduction, so that it can get more information about the effectiveness of the proposed rights protection mechanisms.
“Even after six versions, ICANN has failed to demonstrate that the benefits of unlimited new gTLDs will outweigh the costs,” said Claudio DiGangi, INTA External Relations Manager, Internet & the Judiciary.
ICANN now has a tight schedule before the next Extraordinary General Meeting in Singapore in June. The ICANN Board will have a teleconference with the Government Advisory Committee on May 20 and will post its final guidebook on May 30.
DiGangi questioned whether ICANN would be able to address all the concerns raised by the GAC and brand owners in the latest round of comments in time for these deadlines.
There will be a concurrent session on Tuesday afternoon entitled How Brand Owners Can Prepare for the Proposed Expansion of the Domain Name System.
