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ICANN Board: You Got It Right. Then You Got It Wrong. Now, Get It Right Again.

The ICANN Board has itself in a pretty pickle. The Governmental Advisory Committee (GAC) Consultancy with the Board in Brussels was an apparent non-starter. After hundreds of man-hours’ worth of comments provided by the Intellectual Property Constituency (IPC), the Board continues to claim that it lacks sufficient information on trademark issues in order to respond to concerns.

Surprising? Not really.

The ICANN Board has a well-developed history of stonewalling on the topic of trademark protections, apparently in the hopes that the problem will just magically go away. Of course, it won’t.

The Board did get one thing right, and then it proceeded to get it wrong shortly thereafter. What it got right was the formation of the Implementation Recommendation Team (the “IRT”), a group of leading trademark experts from around the world which put together a tapestry of trademark protections that the IRT members believed that it could “sell” to the trademarks community as sufficient. True, there are some in the trademarks community who don’t believe any amount of protections will be sufficient to stem the tide of costs related to protecting consumers from the confusion that could result from the implementation of hundreds of new generic Top-Level Domains (gTLDs). Even so, the IRT members were apparently prepared to take the heat for ICANN and help it move forward with what many believe is a reasoned, intellectually honest approach to brand protections. They concluded their work in a short amount of time and at great personal expense.

Instead of adopting the IRT recommendations, ICANN Staff took an axe to the IRT recommendations, and then ICANN formed the Special Trademark Issues team (I served on the STI, but not the IRT), gave them a narrow mandate to reach consensus on the items remaining after the Staff’s dissection, and provided them with a very short time frame to do so. There have been several recent articles on this website discussing the STI, what it supposedly did, and what great sports we were when we did it. Whether or not those articles accurately reflect what happened in the STI isn’t the topic of this article. I will agree with others who have written on the subject and say that we were all in fact great sports, got along famously, and left feeling like we had advanced the cause of civility in the ICANN community. I even made some new friends. However, the reality of the STI was that not all IRT recommendations were on the table. For example, whenever I asked about the Globally Protected Marks List (an IRT mainstay), I was politely, but firmly, told by the chair of the STI that no discussion on that topic would be allowed. As a result, if the Board hopes to hang its hat on the hard and congenial work of the STI, it had better think twice, since there can be no consensus on taboo topics.

So, what can the Board do now that it got it right and then got it wrong? It can choose to get it right again. I was asked by an ICANN Board member in Cartagena what I would do if I could waive a magic wand to fix the trademark problems with the new gTLD program. Here is the answer I gave him:

  1. Adopt the IRT recommendations in their entirety.
  2. Politely ask the IRT members to drop everything and urgently fill in any implementation gaps prior to the San Francisco meeting, and pay the IRT members for their time, travel and expenses to do so.
  3. Announce at the San Francisco meeting that the IRT recommendations have been accepted and the forthcoming Applicant Guidebook will reflect those recommendations.

When the trademark crowd shows up in San Francisco and tells the Board that what they have done is insufficient to protect consumers, it could be argued that the Board would then be justified to refer them back to the IRT while telling everyone that ICANN finally got around to following the advice of the trademark experts whose opinion it sought in the first place.

If the ICANN Boards wants the new gTLDs to move forward, it needs to get it right again and right away.

By Paul McGrady, Attorney / Author

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Frankly, this whole argument is like saying David Wrixon  –  Mar 2, 2011 8:36 AM

Frankly, this whole argument is like saying there should only be one television channel, or one radio station or a single national newspaper, or that the number of billboards should be limited to protect the interests of Trade Mark Holders.

I am not saying that Trademark holders don’t have problems, but frankly I am not convinced that increasing the number of domain extension is going to have a significant impact and there is adequate recourse already and more is on offer.

The real issue is whether such interest should stiffle the legitimate rights of the rest of society to have diversity and freedom of expression. Or whether the US is going to continue to be a greater tyrant than “Communist China”?

One demensional thinking Paul Keating  –  Mar 2, 2011 12:56 PM

“Instead of adopting the IRT recommendations, ICANN Staff took an axe to the IRT recommendations,”

You have to be joking.  The IRT recommendations came from a group representative only of the IP side of life.  They actually rejected non-IP constituent candidates.  The result was a completely one-sided set of “suggestions” which were completely trounced during the public comment period.  ICANN did not take the axe to the proposals, they simply publicized the public outcry.

Even though I regularly represent those on both sides of the debate, I am frankly tired of hearing how much enforcement costs the IP industry and that everything must be done to reduce those costs.  The legal rights embodied in “IP” are an exception to the principles of free-speech.  IP protection is an exception to the norm.  The burden to society in the limits being sought to “protect” IP rights never seems to be discussed.  This is perhaps because, like any freedom, it is deemed inconsequential when you enjoy it and becomes invaluable only after it is lost.  So powerful is the concept of freedom of speech that Thomas Jefferson is claimed to have said that if one took away all of the rights embodied in the Bill of Rights and the Constitution, leaving only the freedom of speech, you would quickly see the return of all of the rights that had previously been taken.

When people complain about the cost of enforcing IP rights, they often ignore the simple truth that the cost is the price paid to enjoy the monopolistic rights granted.

The sole basis for IP rights is the promotion of innovation.  From what I am seeing recently this fundamental concept seems to have been lost in the noise.  There have been many recent studies showing that innovation is not really linked to IP rights protection.  An example would be to just look at the amount of unprotected content created since the birth of the Internet.  Is the clamor about IP rights protection really about promoting innovation or is it really about preserving old business models against the rages of the marketplace?

I fully agree with Paul here Suresh Ramasubramanian  –  Mar 2, 2011 2:26 PM

Any set of recommendations that are based on only one constituency and not on consensus will find itself getting "taken an ax to" just about as soon as other constituencies have any opportunity to comment. I do realize that the lack of interest in IRT's recommendations would hardly contribute to make the job of IP litigation practitioners easier - but I guess that can't be helped too much.

Hey Paul,I suggest you read the article Constantine Roussos  –  Mar 2, 2011 5:00 PM

Hey Paul,

I suggest you read the article by Konstantinos Komaitis called “A Fairness Scorecard for Trademark Protection under the New TLDs” to enlighten you about how far ICANN has gone for the big corporate trademark community.

My question is this. If big trademarks are suffering so much, why aren’t they talking about implementing changes for .COM where nearly all the abuse happens? Isn’t it fair to say the new gTLD protection mechanism go way far beyond what is available for .COM and other generics out there today?

Seems like there is a lot of time wasted over economic reports predicting the future (which is impossible to do) as well as claiming that ICANN has done nothing for big trademark interests. If the new gTLDs trademark protection mechanisms are an improvement of the current .COM protection mechanisms then it is obviously a step or two forward.

The web is moving so fast forward that we are getting lost in conversations about the same issues on trademarks that have been beaten to death at ICANN. Enough has been done and enough time has been spent by the ICANN community over the last few years on this issue. Big corporate trademarks dominated the conversations over other issues such as how to responsibly launch TLD transliterations/synonyms to avoid user confusion as well as giving incentives for bundling to accommodate more specialized IDN TLDs for an internationalized audience.

Applicants and users have been under represented at ICANN policy-making at the expense of big corporates pretending that new TLDs will really affect their company in a negative manner. Last thing I heard Canon, Nike, IBM will be going for a .brand. Many others will follow. Jump on board.

Time to get things moving forward with the goals of innovation, consumer choice and competition as the primary driver of the TLD program,

Constantine Roussos

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