gTLD comment closes
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

gTLD comment closes

The comment period for the latest draft of ICANN’s draft Applicant Guidebook for new generic top-level domains ended yesterday, one month after the draft was released

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.

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article